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Practice Points

September 16, 2016

NDA Alert: Modify Your Non-Disclosure Agreements!

The recently enacted federal civil trade secret legislation immediately impacts the way non-disclosure agreements should be drafted. The owner of confidential information may find himself without important remedies under the new statute if he has failed to include notice of the statute’s whistleblower immunity provisions in his employee agreements. Notice of those provisions must be provided in all agreements imposing a confidentiality obligation on employees, independent contractors and consultants.

What Activities Receive “Immunity”?
Amendments to the Economic Espionage Act, 18 U.S.C.A. §§. 1831 et seq. (EEA) contain new whistleblower protections. The amended EEA now provides that the following types of disclosures will enjoy at least some measure of immunity:

  • Disclosure of a trade secret to a governmental official or an attorney solely for the purpose of reporting or investigating a suspected legal violation;
  • Disclosure of a trade secret in a document that is filed under seal in a lawsuit or other proceeding;
  • Disclosure or use of a trade secret in connection with retaliation lawsuits, so long as filings containing the secret are made under seal.


What Activities Do Not Receive “Immunity”?
Under the plain meaning of the statute’s immunity language, certain activities receive no protection. Disclosures to the media and the public, for example, are not covered. The only disclosures afforded immunity are to legal counsel, governmental authorities, and adjudicative tribunals. And the statute is clear that such disclosures to the authorities must be made “in confidence” and disclosures in lawsuits and other proceedings must be made “under seal.” Any whistleblower publicly disclosing confidential materials (e.g., by posting information on social media or by talking to the press) therefore will find no shelter under the EEA.

Nor do the EEA’s new immunity provisions extend to the unauthorized or otherwise improper acquisition of a trade secret. Indeed, the statute expressly states that it does not “authorize, or limit liability for, an act that is otherwise prohibited by law, such as the unlawful access of material by unauthorized means.”

Furthermore, the immunity provided in subsection (b)(1) is expressly limited to liability “under any Federal or State trade secret law.” This limitation is important because, as stated above, claims brought against whistleblowers frequently sound in contract (e.g., breach of a confidentiality agreement) or are brought under common law principles that do not require a trade secret (e.g., breach of fiduciary duty). Such claims apparently will not receive immunity under the EEA.

Impact on Employers—The Need to Update All Non-Disclosure Agreements
Employers across the country should revisit their non-disclosure agreements to ensure compliance with the amended EEA’s notice provision: “An employer shall provide notice of the immunity set forth in this subsection in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.” 18 U.S.C.A. §1833(b)(3)(A) (emphasis added). This broad wording extends to any and all agreements with an employee that address confidentiality, potentially encompassing employment agreements, confidentiality and non-disclosure agreements and benefits agreements. The notice provision is quite broad in another respect as well. It applies not only to contracts with employees, but contractors and consultants as well. 18 U.S.C.A. § 1833(b)(4).

Notice can be provided by reciting the immunity provisions, or by referencing a “policy document provided to the employee that sets forth the employer’s reporting policy for a suspected violation of law.” Presumably, this would allow an employer to insert into its employment and confidentiality agreements a reference to the page in its employee handbook wherein its reporting policy can be found. The prudent employer will ensure that its reporting policy provisions mirror those in the statute, and will address in some other way any consultants and/or independent contractors who might undertake contractual confidentiality obligations without receiving a copy of the handbook.

The ramifications for failing to provide this notice are limited to a restriction of the array of remedies available to the employer under the statute. Employers are ineligible to receive an award of exemplary damages or attorneys’ fees under the EEA against any employee to whom notice was not provided. 18 U.S.C.A. §1833(b)(3)(C) . While such remedies still might be available to such an employer under the UTSA, depending on the circumstances, prudent employers will consider adding the required notice provision to their NDAs.

For more information and practice points about the new Defend Trade Secrets Act of 2016, see the Defend Trade Secrets Act of 2016 Handbook.


Linda K. Stevens is a partner at Schiff Hardin LLP in Chicago, Illinois.



August 23, 2016

Richard Prince, Back in the Spotlight

At this point it is no longer surprising that Richard Prince has been sued yet again for copyright infringement. This time, Prince is up against his most famous adversary yet, Dennis Morris. Morris is a rock and roll photographer known for his images of Sid Vicious and Bob Marley. Morris claims that Prince is infringing on his copyright through appropriation art—art works that are composed mainly of pre-existing photographs and other images. Unfortunately for Morris, this is not Prince’s first rodeo, and by now, he has practically become an expert in the “fair use” defense, as well as one of its highest-profile proponents.


Prince’s broad reading of fair use as a basis for evading infringement claims against his appropriation art was implicitly blessed in the Second Circuit’s 2013 decision in Cariou v. Prince, 714 F.3d 694,which held that Prince’s works that appropriated photographs from Patrick Cariou’s book Yes Rasta and added graffiti blobs and other elements to the photographs was transformative and constituted fair use.


After his victory in the Second Circuit, Prince must have felt invincible, because in September of 2014 he debuted what is likely his most controversial exhibit yet, “New Portraits.” At this exhibit, which was displayed at the high-end Gagosian Gallery, Prince revealed his new “experiment” for the copyright infringement battle—screenshots of Instagram photos. However, in typical Prince fashion, he found a way to transform these photos posted publically by Instagram users. First, he did not copy the photo itself, but the entire Instagram interface. Prince also posted a comment on each image before taking the screenshot. Finally, he had blown the image up to gallery size, rather than the most often used size—a cell phone screen’s length.


One group whose Instagram posts were appropriated by Prince, the pin-up group the Suicide Girls, responded by simply printing their own version and selling them for a fraction of the price Prince was charging.


Fig. 1. Prince's image on left, Suicide Girls's image on right.


But another “New Portrait” work involving an Instagram user’s unauthorized use of fine-art photographer Donald Graham’s photograph “Rastafarian Smoking a Joint” became the subject of litigation when Graham sued Prince for copyright infringement in December 2015. Graham v. Prince, Civ. No. 1:15-cv-10160-SHS (S.D.N.Y. filed Dec. 30. 2015).Prince moved to dismiss the case, relying heavily on the Second Circuit’s holding in Cariou v. Prince that as long as the work is “transformative,” the use is fair. Prince argued that the work is transformative because it incorporates the Instagram interface, Prince’s comment and other users’ comments and “likes” that “have become iconic elements of the modern internet,” and thus conveys an entirely different context and purpose than the original. The motion to dismiss remains pending, but the result will provide guidance to copyright holders on how to protect their rights when a work is uploaded to a publically available platform without authorization and subsequently appropriated by another party.


In his suit against Prince, filed several months after the Graham lawsuit, Morris claimed that Prince “wrongfully created copies of the copyrighted…Image without” Morris’s consent by re-photographing Morris’s photo of Sid Vicious out of a book and posting it to his Instagram account, as well as making unauthorized use of several photos of Vicious in his 2011 exhibit, “Covering Pollock.” Dennis Morris LLC, v. Prince, Civ. No. 2:16-cv-03924 (C.D. Cal. filed June 3, 2016). The outcome of the motion to dismiss in the Graham case may provide guidance in resolving the Morris suit as well.


Although Prince seems to be a rogue artist trying to make a quick buck, his experience in copyright infringement cases indicates that he must know what he is doing. Aside from keeping his lawyer in business, Prince likely could be a certified expert in infringement cases at this point. Prince seems to consistently push the boundaries of fair use, and it will be interesting to see if and when he goes one step to far and is slapped with an adverse ruling and a hefty fine. One thing is certain, any lawyer interested in copyright law should continue to keep an eye on Prince for the current state of fair use.


Keywords: intellectual property, litigation, art, Dennis Morris, Richard Prince, Sid Vicious, Bob Marley, copyright infringement, fair use


—Robby Anderson, University of Alabama School of Law, JD Candidate 2017



August 23, 2016

Cybersecurity Rulings Tap Insurance and Standing Issues

A data breach at P.F. Chang’s China Bistro, Inc. (P.F. Chang’s), spurred recent rulings in several circuits that highlight cyber insurance policies and customers’ standing to sue.


In June 2014, P.F. Chang’s discovered that computer hackers obtained approximately 60,000 credit card numbers belonging to its customers and posted them on the internet. Subsequently, P.F. Chang’s Mastercard payment processor, Bank of America Merchant Services, LLC (BAMS), demanded payment from P.F. Chang’s for multiple assessment fees related to the fraudulent transactions that Mastercard imposed on BAMS. P.F. Chang’s sued its insurer for indemnification. Whether damages owed to BAMS were covered under the policy was the primary issue for the court. Separately, customers sued P.F. Chang’s for fraudulent transactions on their credit cards, their time and efforts to monitor statements to identify potential fraudulent transactions, and fees associated with credit monitoring. The customers’ standing to sue was a primary issue in that case.


In P.F. Chang’s China Bistro, Inc. v. Fed. Ins. Co., No. CV-15-01322-PHX-SMM (D. Ariz. May 31, 2016), P.F. Chang’s sought indemnification under its cybersecurity insurance policy of nearly $2 million of fraud recovery and related fees assessed by BAMS. P.F. Chang’s argued in favor of indemnification, in part, on the basis that the policy was marketed as “a flexible solution designed by cyber risk experts to address the full breadth of risks associated with doing business in today’s technology-dependent world.” The court disagreed, ruling that the damages demanded by BAMS were not covered despite the fact that P.F. Chang’s was liable.


The court granted summary judgment in favor of the defendant insurer, holding that the insurer was not obligated to pay the assessment fees because BAMS did not suffer a “privacy injury” as defined in the policy. Specifically, the court reasoned that the covered “privacy injury” could only be suffered by the person whose records are actually or potentially accessed without authorization, and the stolen records at issue were not BAMS’ records, but rather, were the issuing bank’s records.


Separately, in Lewert, et al., v. P.F. Chang’s China Bistro, Inc., 819 F.3d 963 (7th Cir. 2016), the Court of Appeals for the Seventh Circuit reversed a district court’s decision granting a motion to dismiss for lack of standing in a class action brought by P.F. Chang’s customers. In effect, the court found standing even where some of the alleged damages were speculative. However, other federal appellate courts remain split on this issue.


There was more than one plaintiff customer in Lewert. One alleged that the data breach resulted in four fraudulent transactions on his credit card, which caused him to purchase a credit monitoring service. Another customer did not spot any fraudulent charges on his card but alleged that he spent time and effort monitoring his card statements and credit reports after learning of the data breach. The Seventh Circuit found even the second customer’s allegations were sufficient to support standing, holding that the increased risk of fraudulent charges and identity theft as a result of the data breach was concrete enough to support a lawsuit.


The decision in Lewert lead to the reopening of another action involving an insurer and P.F. Chang’s. In The Travelers Indem. Co. of Connecticut v. P.F. Chang’s China Bistro, Inc., the insurer sought a declaratory judgment disclaiming coverage in class action lawsuits brought by P.F. Chang’s customers subjected to the 2014 data breach. See Travelers Indem. Co. of Connecticut v. P.F. Chang’s China Bistro, Inc., No 3:14-cv-01458-VLB (D. Conn. filed Oct. 2, 2014). The case, which had been stayed pending appeals in three lawsuits that had been dismissed, was reopened after the Lewert decision and was still an active case as of August 9, 2016. See No 3:14-cv-01458-VLB (D.Conn. D.E. 43).


Note, however, that there is a split among circuits on the issue of standing where the basis of the complaint is an increased risk of identity theft as opposed to actual damages. For example, the Third Circuit has held that such risk is a hypothetical, future injury making it insufficient to establish standing. See Reilly v. Ceridian Corp., 664 F.3d 38, 42 (3d Cir. 2011), cert. denied, 132 S.Ct. 2395 (2012).


Issues related to data breach preparation and response are not yet solidified in nationwide courts. But as cybersecurity policies evolve and the courts gain opportunities to weigh in on these issues, insurers and their customers will need to keep informed of the evolving case law to best prepare for and resolve cybersecurity threats.


Key Words: intellectual property, litigation, cyber, cybersecurity, data breach, identity theft, privacy, insurance, standing


Nancy A. Del Pizzo and Gene Y. Kang, Rivkin Radler LLP, Hackensack, NJ



August 2, 2016

More Than Hunting Pickachu

While political headlines have been thoroughly dominating the news cycles this month, a decidedly apolitical phenomenon has also been making waves around the world: Pokémon Go. Pokémon Go is an augmented reality game that uses a player's smartphone camera and GPS to allow them to hunt for virtual creatures, called Pokémon, as though they exist in the real world. As players walk around looking at their real surroundings through their smartphones, animated Pokémon characters will sporadically appear as overlays to the live video stream. Players can take still photos of that video stream and post pictures of virtual Pokémon appearing in the real world on social media sites.


Within two weeks of its initial release on July 7, 2016, the Pokémon Go app had been downloaded more than 30 million times. With its runaway popularity around the globe, Pokémon Go poses a number of legal issues. For example, with respect to property law, a steady chorus of homeowners and private businesses has emerged complaining about Pokémon Go players trespassing on their properties in search of virtual creatures to capture. In the field of tort law, commentators have openly wondered about the possibility that Pokémon Go users might cause accidents, such as someone distractedly driving a car while playing the game. In fact, numerous police departments and safety agencies have issued public warnings against such conduct. Beyond these traditional areas of law, the rapid rise of Pokémon Go also raises some legal issues peculiar to the Information Age.


Personal privacy is easily the most frequently voiced concern about the Pokémon Go rollout. As with most apps, the user must accept the distributor's terms and conditions at the outset before the app can be accessed or utilized. These terms and conditions typically contain a privacy policy, which governs how and to what extent the distributor may utilize any data collected from the user's operation of the app.


Pokémon Go's broad terms and conditions came under immediate fire from the public. Most significantly, the agreement granted Niantic full access permission to each user's Google account, including all the contents of their Google-based email. In response to the outcry, Niantic quickly issued a fix, which removed its ability to access any Google account information of the users beyond their basic profile, such as user ID and email address.


Still, a number of critics continue to express alarm over the scope of digital data generated by Pokémon Go players that may be collected, used and shared by Niantic. Senator Al Franken of Minnesota issued a letter to Niantic on July 12, 2016, enumerating his privacy concerns regarding the game. He wrote: "From among a user's general profile information to their precise location data and device identifiers, Niantic has access to a significant amount of information, unless users—many of whom are children—opt-out of this collection." He further took issue with the terms and conditions that permit Niantic to share the aggregated data of its users with other third parties for a non-exhaustive list of purposes.


Beyond the players' privacy rights, Pokémon Go implicates third-party privacy rights. For instance, a recent bulletin issued by a hospital in New Orleans warned healthcare providers that "Pokémon hunters" were invading the hospital in search of Pokémon. It cautioned staff that these "Pokémon hunters" could take photographs of sensitive areas of the hospital, as well as patients receiving treatment. The hospital directed staff to "kindly interact" with the players and steer them away from any places in the hospital where privacy is a concern. An interesting legal question arises as to an organization's liability if sensitive third-party information, such patient information, is disclosed by a Pokémon Go player.


Pokémon Go's full rollout is still underway. As the app's popularity continues to grow and many more millions of users download it, privacy law practitioners will be interested in monitoring whether Niantic responds to the public pressure to address these personal privacy issues that now typify such smartphone-based products.


Lesli D. Harris and Bryant S. York, Stone Pigman Walther Wittmann LLC, New Orleans, LA



July 15, 2016

Three Key Implications of the Supreme Court's Cuozzo Decision

On June 20, 2016, in Cuozzo v. Lee, the U.S. Supreme Court held that (1) the America Invents Act bars the appeal of decisions by the Patent Trial and Appeal to institute post-grant review, unless the appeal raises an important question that goes beyond the merits of the litigation below; and (2) the United States Patent and Trademark Office (USPTO) had the authority to create rules governing inter-partes review—specifically rules implementing the use of the Broadest Reasonable Interpretation claim construction standard (used in, among other things, the patent application process) as opposed to the ordinary meaning standard (used in district court litigation).


Overlapping—But Not Identical—Purposes
Proceedings before the Patent Trial and Appeals Board and district court litigation have similar purposes. Cuozzo had argued that the Broadest Reasonable Interpretation is improper because of the similarities between inter partes review and district court litigation. The Court dismissed this argument: “The problem with Cuozzo’s argument . . . is that in other significant respects, inter partes review is less like a judicial proceeding and more like a specialized agency proceeding.” “Most importantly,” the Court noted, “these features, as well as inter partes review’s predecessors, indicate that the purpose of the proceeding is not quite the same as the purpose of district court litigation.” (emphasis added). The Court was unconvinced that in changing post grant reexamination proceedings to inter-partes review proceedings, “Congress wanted to change its basic purposes, namely, to reexamine an earlier agency decision.”


Continued Concern over Patent Troll Activity
At oral arguments, Justice Breyer had stated:


[T]here is another way to look at it . . . that there are these things, for better words, let’s call them patent trolls, and that the . . . Patent Office has been issuing billions of patents that shouldn’t have been issued I overstate but only some. And what happens is some person in business gets this piece of paper and . . . looks at it and says, [“]oh, my God, I can’t go ahead with my invention.[”] And so what we’re trying to do with this process is to tell the office, you’ve been doing too much too fast. Go back and let people who are hurt by this come in and get rid of those patents that shouldn’t have been issued. Now, we will give you, again, once the same chance we gave you before, and that is you can amend it once if you convince the judge you should have done it before. But if, on the broadest possible interpretation, you know, reasonable interpretation, it shouldn’t have been issued, we’re canceling it.


This concern was reflected in the Court’s opinion that “in addition to helping resolve concrete patent-related disputes among parties, inter partes review helps protect the public’s ‘paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.’”


Limits of Harmonizing Patent Law with Other Areas of Law
Cuozzo hints some of the limitations on making patent practice less sui generis. At oral arguments, Chief Justice Roberts asked at one point “why . . . should we be so wedded to the way they do business in the [USPTO] with respect to the broadest possible construction when the . . . point is not to replicate [USPTO] procedures[?]” This addressed a concern that, as Cuozzo argued, “the use of the broadest reasonable construction standard in inter partes review, together with use of an ordinary meaning standard in district court, may produce inconsistent results and cause added confusion.” Indeed, the Court, in the Cuozzo opinion, “recognize[d] that that is so.” Nonetheless, the Court observed that “[t]o try to create uniformity of standards would . . . prove difficult.” Further, the Court could not “find unreasonable the Patent Office’s decision to prefer a degree of inconsistency in the standards used between the courts and the agency, rather than among agency proceedings.”


Moving forward, a number of questions remain open. To what extent will the Cuozzo decision inform other types of post-grant proceedings, such as Post-Grant Review or Covered Business Method review? What types of constitutionally important questions are appealable at the institution stage? To what extent should decisions of the Patent Trial and Appeal Board be consistent with district court litigation? All of these questions will have to wait as the contours of the America Invents Act continue to emerge.


Jarrad Wood, Law Clerk, Superior Court of the District of Columbia, Washington, D.C.


The views expressed in this article do not necessarily represent the views of the Court, or the D.C. government.



June 28, 2016

Supreme Court Clarifies Test for Fee-Shifting in Copyright Cases

The Supreme Court on June 16 issued a unanimous ruling clarifying the test for awarding attorneys’ fees to successful copyright litigants. The decision, in Kirtsaeng v. John Wiley & Sons, Inc., is sure to have lasting impact on how both plaintiffs and defendants weigh the risk of litigating a copyright case to completion.


The underlying facts are fairly straightforward. Kirtsaeng was a Cornell graduate student who learned that foreign versions of certain textbooks were sold at lower prices than identical versions in the U.S. Seeing an opportunity, Kirtsaeng bought lawful copies of the books overseas and then shipped them to the U.S., where he sold them for less than the publisher’s U.S. price, pocketing a nice profit.


John Wiley & Sons, a textbook publisher, sued Kirtsaeng for copyright infringement in the Southern District of New York. Kirtsaeng argued that he was protected under the U.S. Copyright Act’s “First Sale” doctrine. In general terms, that doctrine holds that once a copyright holder sells a copy of his work, that copy may be resold without restriction. When the Kirtsaeng case was tried, the circuit courts were divided over whether the First Sale doctrine applied to copies of works first sold outside the U.S. The Supreme Court had deadlocked 4–4 on the issue as recently as 2010. Thus, the contrary positions advanced by Kirtsaeng and Wiley & Sons were both objectively reasonable.


In a 2013 decision (Kirtsaeng I), the Supreme Court revisited the First Sale question and this time reached a decision, agreeing with Kirtsaeng that the First Sale doctrine does apply to lawful copies first sold outside the U.S. Therefore, Kirtsaeng’s U.S. resale of foreign-purchased copies was entirely lawful.


On remand, the district court, and later the Second Circuit, denied attorneys’ fees to Kirtsaeng as the prevailing party. Supreme Court precedent, set forth in Fogarty v. Fantasy, Inc., established multiple “nonexclusive” factors to be considered in fee-shifting decisions, including: the “frivolousness, motivation, objective unreasonableness[,] and the need in particular circumstances to advance consideration of compensation and deterrence.” Kirtsaeng argued that his victory achieved the resolution of an unsettled, important legal question—here, the First Sale doctrine—which promoted the purposes of the Copyright Act and so warranted his recovery of fees. The lower courts rejected this view, though, instead giving the greatest weight to the fact that the plaintiff Wiley & Sons’ litigation position, although ultimately rejected, was objectively reasonable.


Thus, the question on appeal in Kirtsaeng II was how a court, exercising its discretion to award fees, should consider and apply the various relevant factors.


Weighting “Objective Reasonableness”
Section 505 of the Copyright Act provides that a district court “may . . . award a reasonable attorney’s fee to the prevailing party” in a copyright infringement action, but as noted in an earlier blog post, the circuit courts have applied Fogarty’s fee-shifting factors in varying ways. The Second Circuit, from which Kirtsaeng appealed, held that “substantial weight” should be given to the objective reasonableness of the losing party’s position. Since Wiley & Sons’ position was objectively reasonable, the Second Circuit affirmed the lower court’s refusal to award fees to Kirtsaeng despite his victory on the merits.


On appeal, the Supreme Court—which had earlier sided with Kirtsaeng on the First Sale doctrine—now sided with Wiley & Sons on attorneys’ fees, affirming that district courts should give “substantial weight to the objective reasonableness of the losing party’s position.” The Court emphasized that this is not to be treated as the determinative or overriding criterion, and that an informed weighing of all the pertinent factors may justify a fee award against a party in a given case even though its arguments were objectively reasonable. Because it was unclear whether the Second Circuit had given such due consideration to all the relevant factors, the Court remanded for further proceedings.


But the Court expressly disagreed with Kirtsaeng’s contention that the purposes of the Copyright Act are best served by awarding fees to a prevailing party whose case produced an important advance in copyright law even though the defendant’s claims were objectively reasonable. In her opinion for a unanimous Court, Justice Kagan concluded that Kirtsaeng’s approach could “just as easily discourage as encourage parties to pursue the kinds of suits that meaningfully clarify copyright law,” depending on how risk-averse the party may be.


For a plaintiff with a strong position, Kirtsaeng II offers further incentive to fight the good fight and pursue vindication. Likewise, an accused infringer with a strong defense will be encouraged not to throw in the towel, but to seek his day in court. As Justice Kagan wrote for the Court, “[w]hen a litigant—whether plaintiff or defendant—is clearly correct, the likelihood that he will recover fees from the opposing (i.e., unreasonable) party gives him an incentive to litigate the case all the way to the end.”


To be sure, while “substantial weight” means that a party’s reasonableness will be a factor in assessing fee-shifting in most copyright cases, it will not be a dispositive factor. All other pertinent factors in a given case must be considered. For example, the Court cited litigation misconduct as one circumstance that might, on its own, override the strength of a party’s position.


Kirtsaeng II provides much more clearly delineated guideposts for courts evaluating a claim for attorneys’ fees in copyright cases. This, in turn, will enable litigants to better assess the likelihood of recovering (or suffering) fees in a given case, and also better define the ground rules for appellate review of such awards.


Kevin Bovard, BakerHostetler, Philadelphia, PA, and C. Dennis Loomis, BakerHostetler, Los Angeles, CA



June 21, 2016

A Circuit Split at Last: De Minimis Exception

For the past ten years, the Sixth Circuit Court of Appeals has stood alone in having addressed the issue of whether a de minimis amount of copying used in a song sample constitutes infringement of a copyrighted sound recording. While the Sixth Circuit’s admonition of “get a license or do not sample” has gained little traction in the district courts outside of the Sixth Circuit, neither did its sister circuit courts take the contrary position—until now.


On June 2, 2016, the Ninth Circuit held in VMG Salsoul, LLC v. Ciccone that a 0.23-second “horn hit” sampled from the song “Love Break” for use in Madonna’s song “Vogue” did not infringe the copyright in either the sound recording or the musical composition of the sampled song. Affirming the district court, the Ninth Circuit held that the de minimis exception to copyright infringement “applies to infringement actions concerning copyrighted sound recordings, just as it applies to all other copyright infringement actions.”


The sampling at issue involved a “single” horn hit from “Love Break” consisting of a quarter-note chord comprised of E-flat, A, D, and F notes, played by trombones and trumpets, as well as a “double” horn hit consisting of an eighth note of those same notes, followed by a quarter-note chord. The single horn hit occurs once and the double horn hit occurs twice in the radio edit version of “Vogue.” The double horn hit was derived by the producer of “Vogue” from the single horn hit. In both “Love Break” and “Vogue,” other instruments are playing at the same time as the horns.


The plaintiff proved, for purposes of summary judgment, that the producer of “Vogue” had actually and literally copied the horn hit from “Love Break.” Thus, the Ninth Circuit turned to the questions of whether the amount of copying was de minimis, whether the de minimis exception should apply to copyrights in sound recordings, and finally, whether the district court abused its discretion in awarding attorneys’ fees to the defendants. The court had already held in Newton v. Diamond that the de minimis exception applied to infringement of copyrights in musical compositions. 388 F.3d 1189 (9th Cir. 2004). In Newton, the Beastie Boys had a license for the relevant sound recording, and the court had determined that there was only de minimis copying for purposes of evaluating infringement of the musical composition, where the sampled six-second, three-note flute sequence was not the “heart” or “hook” of the sampled composition.


The court adopted the test from Newton that a “use is de minimis only if the average audience would not recognize the appropriation” for purposes of evaluating the claims of infringement of both the composition and the sound recording. After listening to the recordings, the court concluded as a matter of law that a reasonable jury could not conclude that an average audience would recognize the appropriation of the composition. The sampled composition elements were much shorter than those at issue in Newton, and the “Vogue” sample used only a few of the many instruments playing during the sampled temporal segment.


For purposes of the copyright in the sound recording of “Love Break,” the court noted that the “Vogue” producer had manipulated the copied sound recording, modifying the horn hit from the “Love Break” sound recording by “transposing it upward, cleaning up the attack slightly to make it punchier…and overlaying it with other sounds and effects.” The court thus determined that no reasonable jury could conclude that an average audience would recognize that the modified 0.23-second recording of a single quarter note had been appropriated. Having been modified in this manner, the horn hits in “Vogue” did not sound identical to the horn hits from “Love Break.” To illustrate this point, the court pointed out that the plaintiff’s primary expert had originally misidentified the source of the “double horn hit” and claimed that the double horn hit itself had appeared in the original recording, only to later recant and conclude that the “Vogue” producer had himself created the double horn hit by using the recording of the single horn hit. Thus, such de minimis copying was not an infringement of the copyright in the sound recording.


The plaintiff had urged the court to follow the Sixth Circuit’s ruling in Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), which held that no de minimis exception would be recognized for copying of sound recordings: Rather, any unauthorized copying, however trivial, constitutes infringement. The Ninth Circuit observed that the Sixth Circuit’s holding is at odds with the longstanding premise that only substantial copying can support a claim of infringement, and further that the statutory text of 17 U.S.C. § 114(b), which creates express limitations on the rights of a copyright holder in a sound recording, should not be interpreted to instead create an exclusive right in the copyright holder to “sample” his or her own recording. Insofar as the district court had granted attorneys’ fees to Madonna and her co-defendants on the basis that the plaintiff’s reliance on the Bridgeport holding was unreasonable, however, the Ninth Circuit vacated the fees award, stating that it “plainly is reasonable to bring a claim founded on the only circuit-court precedent to have considered the legal issue, whether or not our circuit ultimately agrees with that precedent.”


The Ninth Circuit acknowledged that it was creating a circuit split with the Sixth Circuit “only after careful reflection,” but also noted that the leading copyright treatise devoted many pages to discussing why the Sixth Circuit’s opinion in Bridgeport is wrong. Additionally, “almost every district court not bound by that decision has declined to apply Bridgeport’s rule.” As a practical matter, the newly created circuit split creates an incentive for copyright holders in sound recordings to seek redress for unauthorized sampling in the Sixth Circuit, and a corollary incentive for samplers to seek a declaratory judgment of noninfringement in the Ninth Circuit or another court with a history of rejecting the Bridgeport rule if litigation has been threatened. The Salsoul decision tips the weight of the authorities heavily on the side of recognizing a de minimis exception to copyright infringement of sound recordings and away from Bridgeport’s bright-line strict liability for sampling. While congressional action or a Supreme Court decision could resolve this split, neither seems particularly likely, at least for the foreseeable future, notwithstanding the prevalence of the act of sampling in the music industry.


Lesley Grossberg, BakerHostetler, Philadelphia, PA



May 13, 2016

President Obama Signs Defend Trade Secrets Act

On Wednesday, May 11, 2016, President Obama signed into law the very first federal civil trade secrets law, the Defend Trade Secrets Act (DTSA), an amendment to the Economic Espionage Act, which is found at 18 USC Sec. 1831 et seq. Trade secrets now enjoy the same type of federal protection afforded other forms of intellectual property, like trademarks, copyrights, and patents. While trade secrets misappropriation has long been recognized as a federal crime subject to criminal prosecution in federal court, victims have lacked the right to bring a federal civil claim, until now. The DTSA provides victims of trade secrets misappropriation with an entrée to the federal courts as well as more extensive and immediate remedies, including emergency seizure orders to address exigent situations.


Here is what you need to know about this important new law:


The first federal, civil cause of action for trade secrets misappropriation. While trade secrets misappropriation has long been recognized as a federal crime subject to criminal prosecution in federal court, victims have lacked a federal civil (non-criminal) claim, until now. The DTSA creates a federal civil claim for trade secrets misappropriation and makes an array of remedies available, e.g., compensatory damages, punitive damages, injunctive relief, and attorneys’ fees and costs, in certain circumstances.


The convenience and power of federal court. DTSA plaintiffs will benefit from the nationwide scope of the federal courts’ powers at all stages of the litigation: the beginning of the case (e.g., nationwide service of process), during discovery (e.g., nationwide service of third-party subpoenas), and at the enforcement stage (e.g., nationwide enforcement of judgments and interlocutory injunction orders).


New remedies—including ex parte seizure orders. This new entrée to federal court brings with it more extensive and immediate remedies, such as emergency seizure orders to address exigent situations. Although expressly limited to “extraordinary circumstances,” such orders are available when normal procedures and relief are not sufficient, and when necessary to prevent dissemination of the trade secret. Seized materials are taken into court custody, with safeguards.


Clarification of “inevitable disclosure.” In some states, a defendant who knows trade secrets and takes a job with the competition so similar to his prior position that he will inevitably use or disclose his former employer’s trade secrets can be temporarily enjoined from taking that job. This “inevitable disclosure” doctrine, which essentially allows judicially-created non-competes, has been controversial in some jurisdictions. DTSA injunctions may not prevent an employment relationship altogether and must be based on evidence of threatened misappropriation, not merely on the information that the employee knows.


Interplay with state law regarding non-compete agreements. DTSA injunction orders may not conflict with “an applicable state law prohibiting restraints on the practice of a lawful profession, trade or business.” The applicable state-law approach to the enforcement of non-compete agreements therefore will limit the types of injunctive relief available under the DTSA.


Options for plaintiffs. A plaintiff may choose to bring a DTSA claim in either state or federal court. Moreover, the DTSA does not preempt existing state law. So plaintiffs will have options when determining what claims to bring and where to bring them. A number of factors, which will vary from case to case, will determine the best strategy.


The Uniform Trade Secrets Act remains a guiding force. Most of the DTSA’s definitional scheme and menu of remedies is taken from the Uniform Trade Secrets Act, the statute on which most states have based their state trade secrets law. Case law interpreting the Uniform Trade Secrets Act therefore is likely to remain relevant even in DTSA cases, particularly if brought in state court.


Impact on employee non-disclosure agreements. The DTSA provides immunity for certain trade secrets disclosures, e.g., sealed lawsuit filings and whistleblower disclosures to attorneys and government officials. Any employer who fails to provide an employee with notice of these immunity provisions (e.g., in its confidentiality agreements) will be prohibited from collecting punitive damages or attorneys’ fees in any DTSA action against that employee. This requirement applies to all agreements entered into or revised after enactment.

Trade secret protection is going global. The United States’ enactment of the DTSA coincides with increased protection efforts in other countries as well. Indeed, the European Commission recently issued a directive regarding the importance and protection of trade secrets. These various initiatives allow trade secrets owners greater—and geographically broader—protection than ever before.


For more information, contact Linda Stevens (312.258.5667) or Ronald Coleman (404-420-1144), Cochairs of the Trade Secrets subcommittee.


Keywords: intellectual property, litigation, Defend Trade Secrets Act, DTSA, Economic Espionage Act, trade secrets, federal protection


Linda K. Stevens, Schiff Hardin LLP, Chicago, IL



May 3, 2016

Supreme Court Arguments in Two IP Cases Portend Practical Guidance for Practitioners

On April 25, 2016, the United States Supreme Court heard oral arguments in Kirtsaeng v. John Wiley & Sons, Inc., a copyright case, and Cuozzo Speed Technologies, LLC v. Lee, a patent case. In Kirtsaeng, the Supreme Court heard arguments on the proper standard for awarding attorney’s fees for the prevailing party under section 505 of the Copyright Act. In the second case, Cuozzo,the Court reviewed two questions. First, whether the proper standard for patent claim construction before the Patent Trial and Appeal Board (PTAB) during an inter partes review proceeding is the standard used by the United States Patent and Trademark Office (PTO) when reviewing an application for a patent or the standard used by United States district courts during patent suits. The second issue in Cuozzo is whether the PTAB’s decision to institute an inter partes review is judicially reviewable. While the cases present issues of statutory interpretation, during oral arguments a conspicuous focus on fundamental fairness emerged.


Kirtsaeng v. John Wiley & Sons, Inc.
Returning to the Supreme Court for the second time, Kirtsaeng (Kirtsaeng II) centers on the proper standard for awarding attorney’s fees for the prevailing party under the Copyright Act. In Kirtsaeng’s first appearance before the Supreme Court (Kirtsaeng I), the Court considered whether the first sale doctrine in copyright law immunized the defendant’s (Kirtsaeng) sale of textbooks bought abroad and sold within the United States. Kirtsaeng lost at trial and on appeal in Kirtsaeng I, and the Supreme Court reversed. On remand, Kirtsaeng moved for attorney’s fees and the district court denied the motion after considering the factors articulated in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). The district court, as directed by Second Circuit precedent, placed “substantial weight” on the “objective reasonableness” factor which examines whether the losing plaintiff’s position was objectively reasonable. Kirtsaeng, in Kirtsaeng II, contends that placing substantial weight on the “objective reasonableness” Fogerty factor is improper under the Copyright Act.


Kirtsaeng appeared to face several hurtles from the outset, including convincing the justices of a workable alternative rule. In response to the idea that the test for attorney’s fees should include an analysis of the relative resources of the parties—a “David versus Goliath” factor—Justice Ginsburg observed “it does sound like . . . that your rule is if David faces Goliath and David wins, David gets fees no matter how reasonable Goliath's position was.” On the other hand, Kirtsaeng appeared to have some support from Justice Sotomayor who at one point said “I’m sympathetic to your argument that the Second Circuit rule obviously stacks everything in favor of a winning plaintiff . . . because 80 percent are now winning, if not more.”


Wiley, and the government arguing as amicus curiae, pushed back on the statistics indicating that the scales were improperly tipped in favor of prevailing plaintiffs and against prevailing defendants. Wiley noted that the eighty percent number includes a “great number of default judgments where fees are . . . small.” The government pointed out that “there is some ground to quibble with some of the statistics, and [that] . . . there is not this vast disparity.” According to the government, “77 percent of the time when plaintiffs ask for fees and it was decided on the merits in a reported decision, they got fees, and 53 percent of the time when defendants asked for fees.”


Cuozzo Speed Technologies, LLC v. Lee
Cuozzo, the second case heard by the Court, presented two issues—both arising under the Leahy-Smith America Invents Act. The America Invents Act, among other things, created several new types to adversarial proceedings before the PTAB at the PTO. In these proceedings, the PTAB can review a patent that has already been issued to determine whether the patent should not have been issued in the first place. One of these proceedings, inter partes review, has two main procedural stages—the institution stage, where a panel of administrative judges at the PTAB determine whether a patent has at least one claim that is not patentable, and the final decision stage where the PTAB makes a determination as to whether some or all of the claims in the patent at issue are not patentable.


The first issue in Cuozzo is whether the PTAB should construe claims using the “Broadest Reasonable Interpretation” of the claims (the standard used by the PTO when evaluating patent applications) or the “ordinary meaning” standard (used by district courts during patent litigation). At arguments, it appeared that the issue would be largely resolved by answering another, related question—are inter partes review proceedings more like patent applications or are they more like district court adjudications? As Justice Ginsburg observed, the proceedings are “kind of a hybrid. In certain respects it resembles administrative proceedings and other district court proceedings. So there . . . is a right to amend” the patent claims at issue as in patent application proceedings and “[t]here are discovery differences; there are other differences. So . . . it’s a little of one and a little of the other, this inter partes review.”


Chief Justice Roberts had several exchanges with the government in which the Chief Justice indicated skepticism that the Broadest Reasonable Interpretation was the proper standard in light of Congress’s intent that inter partes review, to a certain extent, replace district court patent litigation. The Chief Justice asked at one point “why . . . should we be so wedded to the way they do business in the [United States Patent and Trademark Office] with respect to the broadest possible construction when the . . . point is not to replicate [United States Patent and Trademark Office] procedures[?]”


On the other hand, Justice Breyer pointed out that the Broadest Reasonable Interpretation may be the proper standard in light of the issue of “patent trolls,” or entities that obtain broad patents of the sole purpose of initiating law suits to extract settlements from businesses. As Justice Breyer put it,


[T]here is another way to look at it . . . that there are these things, for better words, let’s call them patent trolls, and that the . . . Patent Office has been issuing billions of patents that shouldn’t have been issued I overstate but only some. And what happens is some person in business gets this piece of paper and . . . looks at it and says, [“]oh, my God, I can’t go ahead with my invention.[”] And so what we’re trying to do with this process is to tell the office, you’ve been doing too much too fast. Go back and let people who are hurt by this come in and get rid of those patents that shouldn’t have been issued. Now, we will give you, again, once the same chance we gave you before, and that is you can amend it once if you convince the judge you should have done it before. But if, on the broadest possible interpretation, you know, reasonable interpretation, it shouldn’t have been issued, we’re canceling it.


The second issue is whether the federal judiciary can review the PTAB’s decision to institute an inter partes review proceeding with respect to one or more claims of a patent brought before the PTAB. This issue did not receive much attention. The petitioner only received one question on the issue. Justice Ginsburg asked the petitioner if statutory language appearing to expressly bar appeal of decisions by the PTAB to institute an inter partes review is even necessary because only final judgements are appealable, stating “there would be a bar on interlocutory review under the final judgment rule, in any event. You don’t need a statute to preclude interlocutory review when the reviewing court can review only final judgments.”


It remains to be seen how the Court will resolve the issues in Kirtsaeng v. John Wiley & Sons, Inc., and Cuozzo Speed Technologies, LLC v. Lee. At this stage, however, intellectual property practitioners may take note of the Court’s attention to the underlying issues of fairness in both cases. Is it fair if it is the case that an emphasis on the “objective reasonableness” factor in evaluating motions for attorney’s fees in copyright cases tips the scale sharply in favor of prevailing plaintiffs and against prevailing defendants in copyright cases? Is it fair if inter partes review proceedings are adjudicative proceedings but the claim construction standard is different than the one used in other adjudicative proceedings before district courts? In both cases, the “ifs” are unresolved. However, it may be worth taking note of how these issues of fairness have manifested themselves in these cases—and how they may arise in future intellectual property cases.


Jarrad Wood, Superior Court of the District of Columbia, Washington, D.C.


The views expressed in this article do not necessarily represent the views of the Court, or the D.C. government.



April 28, 2016

Inter Partes Review Petitions: Heads I Win, Tails You Lose

Inter partes reviews (IPRs) are, plain and simple, a tool for killing patents.  In view of rules implemented by the USPTO and the courts’ interpretations of the AIA statute, it would be ill-deserved to refer to these proceedings as a litigation alternative. Litigation in courts offers opposing parties an opportunity to discover and present evidence in support of their respective positions. At the end of the litigation, there should be a judgment that resolves the contested issues between the parties. Unfortunately for patent owners, when it comes to inter partes reviews, any conclusive effect intended by the legislature has been severely diluted.


According to USPTO rules as practiced by the Patent Trial and Appeal Board (PTAB), inter partes reviews do not necessarily address all of the claims of a patent. In fact, not even all of the claims attacked in the petition need be considered in an inter partes review trial. An inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Yet a final written decision must issue with respect to “any patent claim challenged by the petitioner.” 35 U.S.C. § 318(a). The Federal Circuit found the different wording to describe the claims highly significant. It held that because § 318(a) did not use the language “the claims challenged in the petition,” the Board may institute  and issue a final decision according to its rules as to only the claims and grounds on which it institutes review. Synopsys, Inc. v. Mentor Graphics Corp., 117 U.S.P.Q. 1753 (Fed. Cir. 2016).


It may seem beneficial to the patent owner to avoid an inter partes review trial on patent claims for which inter partes review is not instituted. But instead of benefiting from a determination that a probable showing of invalidity has not been made out, the patent owner may be forced to defend against the invalidity challenge again in court. On March 23, the Federal Circuit Court of Appeals addressed whether an unsuccessful petitioner could raise a non-instituted validity challenge later in court. “We agree with the PTO that §315(e) would not estop [petitioner] from bringing its [non-instituted invalidity argument] in either the PTO or the district courts.” Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., (Fed. Cir. March 23, 2016). Rather than resolving the validity challenge, the inter partes review petition has given the challenger a first chance to try out its invalidity argument and if it does not work, an unhindered opportunity to revise its challenge and assert it again in court. This is because estoppel does not apply to grounds raised in a petition, which were not permitted into the inter partes review trial.


According to the statute, estoppel extends to grounds that reasonably could have been raised in the IPR. Grounds that were not instituted could not have been raised during the IPR trial, so the non-instituted grounds may be raised later in court. What about grounds that weren’t presented in the petition, but could have been? Judge Lefkow of the Northern District of Illinois appears to be the first to consider what is meant by “reasonably could have been raised.” Her analysis found a loophole for petitioners.  Judge Lefkow held that a petitioner can try again in court by including at least one reference, which would not have been found by a skilled searcher, even if that reference discloses no more than references that were readily available. Clearlamp, LLC v. LKQ Corp., No. 12-cv-2533, (N.D. Ill. March 18, 2016). The question put by the court is not whether the prior art content was reasonably available to the petitioner but rather whether the asserted document itself could have been found. The court placed the burden on patent owner to show that the new reference being raised in court reasonably could have been raised in the IPR. Thus, patent owner must show a skilled searcher would have found the reference at the time the petition was prepared.


In Clearlamp, the defendant found a datasheet through a third party subpoena. Although the datasheet had been published on the manufacturer’s website in 2001, it was not shown to have been readily available to a searcher at the time of the IPR petition. So even though the datasheet might have been redundant of prior art that was readily available, the datasheet itself could not reasonably have been raised. Thus, the court allowed the invalidity challenge against a claim that had survived the IPR. The claim was invalidated on the basis of references raised in the IPR plus the datasheet. The petitioner was able to overcome its failure in the PTAB by locating a hard-to-find prior art document, which may have disclosed no more than was available to the petitioner at the time of filing its petition.


Patent owners faced with an IPR fear of losing their patents in the IPR proceeding. Oddly enough, winning at the PTAB will not allay those fears. Of particular concern, the PTAB may have refused to consider “redundant” grounds for invalidity. This opens the door to the petitioner to raise those grounds, perhaps with a fuller or better-reasoned presentation, later in court. The weakness of the estoppel provisions puts patent owners in what may seem like a never-ending battle to defend their patents.


Keywords: intellectual property, litigation, patents, patent owners, inter partes review, USPTO


Robert M. Asher, Sunstein Kann Murphy & Timbers, LLP, Boston, MA



April 28, 2016

Trademark Infringement Must Be Willful to Warrant Award of Infringer's Profits

The Federal Circuit, applying Second Circuit trademark law, has weighed in on the issue of whether an infringer’s profits are recoverable absent a finding of willful infringement. In Romag Fasteners, Inc. v. Fossil, Inc. (Fed. Cir. Mar. 31, 2016), a jury had found Fossil liable for patent and trademark infringement of Romag’s magnetic snap fasteners and ROMAG mark. For the trademark infringement, the jury made advisory awards of $90,759 for Fossil’s profits under an unjust enrichment theory, and $6.7 million under a deterrence theory. However, the jury also determined that neither the patent nor trademark infringement was willful.


The district court held that because the jury had deemed the trademark infringement not willful, Romag was not entitled to an award of Fossil’s profits. On appeal, Romag argued that the Lanham Act should be read to permit recovery of an infringer’s profits regardless of whether the infringement was willful or not.


Prior to 1999 amendments to the Lanham Act, the Second Circuit had adopted the view that “under Section 35(a) of the Lanham Act, a plaintiff must prove that an infringer acted with willful deception before the infringer’s profits are recoverable by way of an accounting.” George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992). The D.C. Circuit, Third Circuit, and Tenth Circuit had also adopted this rule, which is concerned with avoiding overcompensation for a plaintiff’s actual injury, guided by the statute’s statement that a prevailing party may obtain monetary damages, including defendant’s profits, “subject to the principles of equity.” In contrast, the Fifth, Sixth, Seventh, and Eleventh Circuits had held that willfulness was not required to recover an infringer’s profits.


Romag argued that George Basch was no longer applicable, in light of 1999 amendments to the Lanham Act. That amendment modified the Federal Trademark Dilution Act of 1995 to clarify that the remedy set forth in Section 1117(a) is available for claims of trademark dilution in addition to infringement and false advertising:


When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of section 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.


15 U.S.C. § 1117(a) (2014) (new language added by Trademark Amendments Act of 1999, Pub. L. No. 106-43, 113 Stat. 218, 219 (1999) underlined).


Romag argued that by adding the word “willful” in front of the reference to dilution but not the reference to trademark infringement, Congress intended to overrule the judicial interpretation requiring willfulness. The Federal Circuit noted that the Third, Fourth, Fifth, and Sixth Circuits have found that the 1999 amendment to Section 35(a), by virtue of requiring willfulness in order to recover monetary damages for a dilution claim, no longer require such a showing in an infringement case. Laukus v. Rio Brands, Inc., 381 Fed. App’x 416 (6th Cir. 2010); Synergistic Int’l, LLC v. Korman, 470 D.3d 162 (4th Cir. 2006); Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d Cir. 2005); Quick Techs. v. Sage Grp. PLC, 313 F.3d 338 (5th Cir. 2002). However, other courts including the First, Ninth, and Tenth Circuits have maintained the requirement notwithstanding the change in statutory language. Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A. Inc., 778 F.3d 1059 (9th Cir. 2015); Fisherman Transducers, Inc. v. Paul, 684 F.3d 187 (1st Cir. 2012); W. Diversified Servs. Inc. v. Hyundai Motor Am., Inc., 427 F.3d 1269 (10th Cir. 2005).


The Federal Circuit, bound to apply the circuit law of the originating court for non-patent matters, observed that the Second Circuit had re-stated its rule from George Basch that “a finding of defendant’s willful deceptiveness is a prerequisite for awarding profits” in a case post-dating the 1999 amendments (although the case did not directly discuss the change in statutory language). Merck Eprova AG v. Gnosos S.p.A., 760 F.3d 247 (2d Cir. 2014).


In accepting the Second Circuit’s more recent statement of the law, the Romag Fastener court emphasized the technical nature of the 1999 amendment and that the legislative history did not indicate any Congressional intent to alter the standard for available damages for trademark infringement. Instead, the court found, the new “willful” language in the 1999 amendment was necessary to clarify that willfulness is required for any non-injunctive relief in dilution cases, whereas a plaintiff’s damages have always been deemed recoverable under Section 35(a) for trademark infringement.


While acknowledging the circuit split on the issue, the Federal Circuit concluded that “the 1999 amendment to the Lanham Act left the law where it existed before 1999—namely, it left a conflict among the courts of appeals as to whether willfulness was required for recovery of profits.” As the Supreme Court has never addressed this issue, the conflict continues.


Lesley McCall Grossberg, BakerHostetler, Philadelphia, PA



April 5, 2016

In re Tam: Still No Trademark Registration for the Slants

In the continuing saga of whether Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment, the rock band, the Slants, will have to wait a little longer before it knows whether it can register its trademark THE SLANTS. The Slants, a band composed of Asian-American musicians, has received a significant amount of press ever since its trademark application, filed by band member Simon Tam, was refused registration on the basis that the mark is disparaging to people of Asian-American descent. Section 2(a) of the Lanham Act bans the registration of such marks. 15 U.S.C. § 1052(a). In 2013, the Trademark Trial and Appeal Board affirmed the refusal in In re Tam, 108 U.S.P.Q.2d 1305 (T.T.A.B. Sept. 26, 2013).


Tam appealed to the U.S. Court of Appeals for the Federal Circuit, challenging the constitutionality of Section 2(a). The Federal Circuit rejected Tam’s First Amendment, vagueness, due process, and equal protection arguments, following the precedent of In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), which held that the refusal to register a mark does not prohibit use of that mark, and thus an applicant’s First Amendment rights are not implicated. Notably, the panel requested an en banc Federal Circuit to revisit the McGinley rule and review its decision, which opened the door for the full court to address the issue of whether Section 2(a) of the Lanham Act violates the First Amendment. In re Tam, 785 F.3d 567 (Fed. Cir. 2015) reh’g en banc granted, opinion vacated, 600 F. App’x 775 (Fed. Cir. 2015).


On December 22, 2015, after an en banc review, the Federal Circuit issued its landmark ruling, holding Section 2(a) unconstitutional because it violates the First Amendment. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), as corrected (Feb 11, 2016). While seemingly a “victory” for the band, the ruling did not translate into federal registration of THE SLANTS.


Accordingly, on March 8, 2016, Tam requested that the Director of the U.S. Patent and Trademark Office (PTO) comply with the mandate of the Federal Circuit. In response, the Acting Solicitor of the PTO advised Tam that there would be no further proceedings until: “(1) the period to petition for a writ of certiorari (including any extensions) in In re Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.” In response, Tam filed a petition for a writ of mandamus, asking the Federal Circuit to issue an order requiring the PTO to comply with the December ruling. In denying Tam’s request, the Federal Circuit held that a writ of mandamus is a rare remedy and is “available only in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power.” Because the PTO has until April 20, 2016, to file a writ of certiorari with the U.S. Supreme Court, it was not an abuse of discretion for the PTO Director not to act on the Federal Circuit’s order.


This case continues to be closely watched, particularly because of its importance to cases involving trademark registrations that have been cancelled under Section 2(a). Stay tuned.


Lisa Bollinger Gehman and Nancy Rubner Frandsen, BakerHostetler, Philadelphia, PA



February 16, 2016

Richard Prince: Toeing the Line Yet Again

In September 2014, “appropriation artist” Richard Prince debuted a typically controversial exhibit, “New Portraits.” This exhibit consisted of enlarged screenshots of users’ Instagram interfaces, including photographs and captions from the original Instagram post, as well as Prince’s own Instagram account’s comments on each picture. Prince sold these prints in the high-end Gagosian Gallery for nearly $90,000 each.


Most of the Instagram accounts from which Prince appropriated these “New Portraits” belonged to models. Rather than sue Prince for copyright infringement, some of these models merely undercut his market by selling their own enlarged Instagram shots for under $1,000. However, photographer Donald Graham declined to take this approach and filed a copyright infringement suit on December 30, 2015, regarding a photograph of a Rastafarian that had been posted to Instagram by a third party (fig. 1).


Fig. 1. Donald Graham’s photo (left); Prince’s Instagram piece (right)


This new suit echoes an earlier case (including its subject matter) brought by photographer Patrick Cariou over Prince’s use of Rastafarian images from Cariou’s book “Yes Rasta” (fig. 2). The District Court had ruled in Cariou’s favor, finding that Prince’s alterations to the images did not constitute fair use. However, the Second Circuit reversed as to 25 of the 30 images in Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013), finding that Prince’s additions to the original pictures changed the overall meaning of the pictures enough to be “transformative.”


Fig. 2. Prince’s altered image (left); Cariou’s original image (right)


This background provides the standard for evaluating Graham’s recent suit against Prince. To create “New Portraits,” Prince did not copy and reprint solely the pictures posted by the other Instagram users; rather, he took a screenshot of the entire Instagram interface, which included the picture, the original comment from the author of the post, and an individualized comment from Prince himself. He then enlarged the photos to gallery size, which slightly pixelated them.  The commentary from Prince himself would seem to add an element favorable to fair use that was absent in Cariou. In that case, Prince had testified that he did not appropriate Cariou’s photographs in order to comment on them, but rather, he merely liked them and found them aesthetically pleasing.


One aspect of the Second Circuit’s fair use analysis in Cariou took into account that the copyright holder had not exhibited his works as prints; the images were only available in an 8” x 11” book. Prince, on the other hand, was marketing these (slightly altered) images in a larger format at the Gagosian Gallery. The Second Circuit commented that Prince’s use thus did not impede the market for the original work. Unlike Cariou, however, Graham does display his pictures in art galleries and offers them for sale, thus operating in the same market as Prince’s “New Portraits” series. This factor could provide a basis for distinguishing Cariou from the instant case.


From a practical perspective, if the Graham lawsuit proceeds to a judicial determination of fair use and the outcome differs from the finding of fair use in Cariou, the decisions may well provide useful guidance for copyright attorneys struggling to discern the ever-shifting target of fair use—just as a pair of lawsuits involving the artist Jeff Koons previously did.  In 1992, the Second Circuit held in Rogers v. Koons that a sculptural interpretation of Rogers’s photograph of a couple holding puppies was not fair use, given evidence that Koons intentionally copied the image, the apparent lack of commentary about the original work, and the minimally transformative elements (a change of media, from photograph to sculpture, was not enough) (fig. 3).  In 2006, Koons prevailed in an infringement suit brought by photographer Andrea Blanch over use of her fashion photograph Silk Sandals in a portion of his painting Niagara, from the series Easyfun-Ethereal (fig. 4). Because the appropriated work only constituted a portion of the allegedly infringing work, and Koons offered an explanation that the use of Blanch’s photograph was necessary for him to comment on the banality and ubiquity of fashion media, the court found in favor of Koons.

Fig. 3. Rogers’s photo (top left); Koons’s sculture (bottom left)
Fig. 4. Blanch’s photo (top right); Koons’s painting (bottom right)


Could Graham v. Prince and Cariou v. Prince provide the next set of Second Circuit fair-use bookends? Stay tuned.


Keywords: intellectual property, litigation, copyright infringement, art, Instagram, Cariou, Graham, Prince, Rogers, Blanch, Koons


—Robby Anderson, University of Alabama School of Law, Class of 2017, Tuscaloosa, AL



February 16, 2016

Shifting Requirements for Non-Disclosure Agreements in Illinois Employment Contracts?

In an environment where employees change jobs frequently, how can an employer protect its confidential information?


In Illinois, the answer to that question may be changing. In late 2015, two courts handed down noteworthy “employee-friendly” decisions. One, a federal court case applying Illinois law, held a non-disclosure agreement unenforceable because it lacked a time or geographical limit for the nondisclosure of confidential information. The other, an Illinois appellate court decision, declined to enforce a nondisclosure agreement—which contained fairly standard confidentiality language—because it was overbroad. While different in many respects, both decisions bear consideration from practitioners drafting nondisclosure agreements in Illinois.


Fleetwood Packaging v. Hein, No.14C9670 (N.D. Ill., Oct. 20, 2015)
In Hein, a federal district court found a nondisclosure agreement unenforceable because it did not set a time or geographic limit on the disclosure of confidential information. For several reasons, many practitioners had understood such limits to be unnecessary for confidentiality provisions. For example, the ease with which large amounts of information and data can be transferred from one location to another, and the decreasing relevance of geographic boundaries in so many industries, makes usage of such boundaries in a non-disclosure agreement problematic. Moreover, the Illinois Trade Secrets Act (ITSA) contains a contracts savings clause expressly stating that “a contractual or other duty to maintain secrecy or limit use of a trade secret shall not be deemed to be void or unenforceable solely for lack of durational or geographical limitation on the duty.” 765 ILCS 1065/8(b)(1).


In declining to enforce the nondisclosure agreement, the court drew a distinction between information that constitutes a trade secret and other confidential information, holding that only agreements to protect the former may omit such limitations. In reaching this result, the court noted that pre-ITSA case law had required such limits, and then interpreted the ITSA’s contracts savings clause to refer and apply only to contracts protecting trade secrets.


Employers and those who represent them can take some solace in two facts. First, this case does not apply to a company’s ability to protect information that constitutes a trade secret – by contract or through a claim brought under the ITSA. Second, this opinion is not binding on other federal courts in Illinois or Illinois state courts and may not presage the result in other cases. Nevertheless, practitioners should expect this case to be invoked by those challenging the enforceability of confidentiality agreements.


AssuredPartners, Inc. v. Schmitt, No. 2015 Ill App. (1st) 1411863 (1st Dist., Oct. 26, 2015)
In AssuredPartners, an Illinois appellate court also sided with the employee and deemed certain provisions of his employment contract to be overly broad and unenforceable—including a nondisclosure provision containing fairly standard language. The employee, an insurance broker, had substantial prior experience and relationships in the insurance industry. He had been employed for a number of years when, two years prior to this lawsuit, AssuredPartners acquired the employee’s brokerage firm and required all employees to sign revised employment agreements. These agreements, eventually rejected by the court, included provisions:


  • prohibiting the employee from competing with the employer in any and all lines of business—even those not handled by the employee during his employment;
  • prohibiting contact between a former employee and all of the employer’s customers—even those with whom he had no direct interactions; and
  • defining “confidential information” to include all information regarding the “business or affairs of the Company” and its affiliates.


Rejection of this last item is likely to be the most surprising—and troubling—to Illinois employers. Confidentiality provisions covering all information regarding an employer’s business are common, especially when coupled with a carve-out for allowing disclosure of information that “becomes generally known to and available for use by the public.” The provision at issue in AssuredPartners fit this description, stating in pertinent part:


“[The] Executive will not disclose . . . any Confidential Information without the Board's written consent, unless and to the extent that the Confidential Information, (i) becomes generally known to and available for use by the public other than as a result of Executive's acts or omissions to act or (ii) is required to be disclosed pursuant to any applicable law or court order.”


The court deemed this confidentiality provision to be overly broad and refused to modify it—which it had the power to do under Illinois law. The court explained its refusal to modify or enforce the provision by stating that “a great deal of information that is not ‘generally’ known to the public does not merit protection under a confidentiality provision.”


While the result in cases of this type tend to be driven by their specific facts, this pronouncement by the Illinois Appellate Court is also likely to be cited against Illinois employers seeking to enforce provisions of similar breadth.


Keywords: intellectual property, lititgation, confidentiality, non-disclosure, agreements, trade secrets, enforceability, Illinois Trade Secrets Act, employment contract, confidential information


Josh Kurtzman and Linda K. Stevens, Schiff Hardin LLP, Chicago, IL



February 10, 2016

Hayuk v. Starbucks Provides a Warning to Abstract Artists

On January 12, 2016, the Southern District of New York ruled against artist Maya Hayuk in her lawsuit against Starbucks Corporation and 72andSunny Partners, LLC for copyright infringement. Hayuk, an internationally renowned muralist who is known for her use of bright colors and overlapping geometric shapes and rays, alleged that Starbuck’s “mini Frappuccino” advertising campaign misappropriated the “total concept and feel” of five of her works (with titles including “Hands Across the Universe,” “the Universe,” “the Universe II,” “Kites #1,” and “Sexy Gazebo”). Prior to launching its mini Frappuccino advertising campaign, Starbucks (through its advertising agency, 72andSunny) approached Hayuk about the possibility of using her artwork in the campaign, but Hayuk turned them down. Starbucks went forward with the advertising campaign that featured a series of brightly-colored, overlapping rays and had remarkable stylistic similarities with several of Hayuk’s works—particularly when compared to sections of Hayuk’s works.


As the Southern District of New York noted, however, neither Hayuk’s style nor her ideas are protected by copyright law—only certain expressions of an idea can be protected, not the idea itself. As such, in order to prove that Starbucks had misappropriated the “total concept and feel” of her works, Hayuk had to prove either (1) that the protectable elements of her works, “standing alone, are substantially similar” to Starbucks advertising campaign, or (2) that Starbucks had misappropriated “the original way in which [Hayuk] had selected, coordinated, and arranged the elements of [her] work.” Hayuk’s works, however, are comprised entirely of bright colors and overlapping geometric shapes and rays—all elements that the Southern District of New York found were unprotected, standing alone, because the expression of the idea (a regular geometric shape or a color) merged with the concept itself. Thus, Hayuk had to rely solely on the specific arrangement and coordination of those unprotected elements.


This, in the court’s eyes, she could not do. Although the Court noted striking similarities between Starbucks’ advertising and elements of Hayuk’s works when those elements were cropped and rotated, the Court found that those similarities faded when Starbucks’ advertising was compared to the whole of Hayuk’s works. Further, as Hayuk was forced to prove that Starbucks had misappropriated the “total concept and feel” of her works, the Court found that it was improper to compare Starbucks’ advertising only to cropped selections of Hayuk’s work. As such, Hayuk could not—as a matter of law—prove that Starbucks had in any way misappropriated her works, and her claims were dismissed.


This case should serve as a warning to both artists whose works are composed of predominantly unprotected elements (such as abstract artists) and to the attorneys who represent them. Though many casual observers may immediately perceive the similarities between Hayuk’s work and Starbucks’ advertising, this case highlights the fact that when the expression of an idea and the idea itself merge, the expression may lose any copyright unprotected. Thus, when dealing with abstract art like Hayuk’s, an artist is frequently forced to rely solely on the arrangement and coordination of objection for legal protection of their work—and as this case shows, even that protection can be defeated through the simple use of creative cropping and recoloring.


Keywords: intellectual property, litigation, Hayuk, Starbucks, copyright infringement, art, muralist, artist

Marcus R. Chatterton and Michael P. Taunton, Balch & Bingham LLP, Birmingham, AL



January 29, 2016

How Rule 1 of the 2015 Amended Rules Might Have Helped Litigants Avoid Admonishment

Sometimes the page limit is also the patience limit. On December 30, 2015, a judge in the Northern District of California strongly admonished both parties in Finjan, Inc. v. Blue Coat Systems, Inc for their failure to comply with the court’s page limits. In its order, the court stated its “Baffle[ment]” at the parties “seeming inability to recall and comply with the Court’s requirements in light of the fact that on occasion they have sought leave to file longer briefs and at times been reminded by the Court of those limitations.” The court did not mince words. The order cited Blue Coat’s “[s]hameless[]” and non-inadvertent decision to, after receiving a brief eight pages longer than permitted, to file a brief in opposition that was 15 pages longer than permitted.

Ultimately, the court balanced the interest of judicial economy against the interest in controlling its docket in favor of Finjan and against Blue Coat. Finjan requested that the court excuse its mistake as inadvertent or, in the alternative, to excuse both parties’ violation of the court’s page-limit order to “avoid wasting any further resources and advance this case on the merits[.]” While the court “appreciate[d] Finjan’s desire to move the case along efficiently,” it found it necessary to sua sponte sanction Blue Coat for its violation of the court’s order. In the interest of judicial economy, the court excused Finjan’s violation. Finding Blue Coat’s 25-page motion to strike Finjan’s 10-page motion for exceeding the page limit to be non-inadvertent, and hypocritical, the court struck Blue Coat’s motion and ordered that it refile a brief of no more than 18 pages.

While certainly an object lesson on the importance of complying with express court orders, the order in Finjan may also be instructive on how Rule 1 of the 2015 Amended Federal Rules of Civil Procedure can and will apply in intellectual property litigation. Rule 1 provides that the rules “should be construed, and administered, and employed by the court and the parties to secure the just, speedy, and inexpensive determination of every action and proceeding.” The committee note clarifies that it has been amended to emphasize the “share[d] . . . responsibility” of the parties and the court to ensure a “just, speedy, and inexpensive determination of every action.” To that end, the committee note continues, “[e]ffective advocacy is consistent with—and indeed depends upon—cooperative and proportional use of procedure.”

It remains unclear whether the parties in Finjan would have avoided the court’s frustration if they had made greater efforts to “cooperative[ly] and proportional[y]” ensure a “just, speedy, and inexpensive determination” of the issue. Nonetheless, it is not unreasonable to believe they would. Intuitively, a 10-page brief is more “just, speedy, and inexpensive” than an 18- or 25-page brief. In the future, litigants may take a page out of Finjan’s book—and take a page out of their own.

Jarrad Wood, Unified Patents, Washington, D.C.


The views expressed in this article do not necessarily represent the views of the Court, or the D.C. government.



November 25, 2015

FilmOn and the Copyright Act Section 111 Compulsory Licensing

Web-based television streaming services have been dealt another blow in their campaign to transmit large broadcasters’ copyrighted programs. In the latest decision on the issue, a federal judge rejected FilmOn X LLC’s claims that the company could stream protected broadcasts without committing copyright infringement. Fox Television Stations, Inc. v. FilmOn X LLC, No. 13-758-RMC (D.D.C. Nov. 12, 2015) (opinion under seal). This ruling follows the Supreme Court’s 2014 decision in American Broadcasting Cos. v. Aereo, Inc., which held that Aereo (a provider of over-the-air television service to Internet-connected devices) was unlawfully publicly performing copyrighted works by providing its subscribers access to television programs over the Internet at about the same time as the programs were broadcast over the air.


More recently, FilmOn, an Internet-based television provider and one-time competitor of Aereo, argued that if the umbrella of traditional cable services covers Web-based services offering similar products, then these companies should also have the right to the benefits of the “cable system” classification and be treated like other cable service providers. On November 12, Judge Rosemary M. Collyer of the U.S. District Court for the District of Columbia granted partial summary judgment against FilmOn. Judge Collyer not only found FilmOn liable for copyright infringement, but also dismissed FilmOn’s counterclaim seeking declaratory relief affirming that they are entitled to a statutory license as a “cable system,” under Section 111 of the Copyright Act.


Section 111 establishes a compulsory licensing system that allows cable companies to make secondary transmissions of copyrighted works. The FilmOn case addressed the question of whether Web-based providers could utilize this compulsory licensing system. FilmOn argued that if Web-based services could be held to violate copyright laws as if they were cable companies, per Aereo,then they should also have access to the perks offered to traditional cable services, specifically section 111’s compulsory license. Judge Collyer, however, interpreted section 111 to not encompass Internet streaming companies within the meaning of “cable systems.” This interpretation is consistent with the Second Circuit’s view that “Congress did not…intend for § 111’s compulsory license to extend to Internet transmissions.” WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 282 (2d Cir. 2012).


FilmOn achieved a different result in a separate case pending in the Central District of California, however. Fox TV Stations, Inc. v. AereoKiller, 2015 U.S. Dist. Lexis 97305 (C.D. Cal. July 16, 2015). In July 2015, District Judge George H. Wu held that because Section 111 of the Copyright Act does not itself draw a distinction between traditional cable services and Internet-based services, the plain language of the statute does not require that courts differentiate between the two when determining whether a provider qualifies as a “cable service.” Judge Wu certified the case for immediate appeal, and the Ninth Circuit subsequently granted the plaintiffs’ petition seeking interlocutory appeal. A decision is expected sometime in spring 2016, potentially setting the stage for a circuit split.


The divergence in authority illustrated by FilmOn’s different outcomes in two different cases may be resolved by federal regulation. The Federal Communications Commission could classify Internet streaming providers as multichannel video programming distributors, which would apply to any service that delivers television channels (regardless of the technology used to do so). This is how cable and satellite companies are treated under the current regulatory scheme. This would, in turn, open Section 111’s compulsory licensing system to qualifying Web-based video providers. While smaller and newer streaming services would likely benefit from such a change, traditional cable and satellite companies would lose ground in the war to retain customers, as more and more people rely exclusively on Internet streaming for their television needs.

Keywords: intellectual property, litigation, FilmOn, Copyright Act, streaming services, Fox Television, Fox TV

Dmitry Dymarsky, BakerHostetler, Philadelphia, PA


October 29, 2015

Ninth Circuit Affirms Existence of Author's Copyright in Batmobile "Character"

A custom automotive garage was affirmed liable for copyright infringement in DC Comics v. Towle, ___ F.3d ___, 2015 WL 5569084 (9th Cir. Sept. 23, 2015), in which the facts were especially one-sided. The automotive engineer advertised his custom vehicles as “Batmobiles” and admitted to copying the appearance of the vehicles in the 1966 television series and the 1989 motion picture both titled “Batman.” Accordingly, because licensees of DC Comics had designed the Batmobile’s appearance in those derivative works, and under the licenses DC Comics itself did not hold the copyrights in the derivatives, the case turned on the legal question of whether these versions of the Batmobile were also covered by DC’s copyrights in the published comic books. The defense argued that the accused vehicles were not covered by any DC Comics copyrights in its comic books, as the relevant versions of the Batmobile had never appeared in the copyrighted comic books, the Batmobile could not be a “character” because it never spoke, and its appearance and features in the comic books constantly changed.


These arguments were rejected. The court first canvassed earlier precedent to set forth a three-part test for determining whether a character in a comic book, television program, or motion picture (as distinguished from other media) is entitled to copyright protection. First, the character must have “physical as well as conceptual qualities” that distinguish it from purely literary characters; second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears; and third, the character must be “especially distinctive” and “contain some unique elements of expression.”


With regard to the Batmobile, as it appeared in the comic books, the court held that this test was satisfied, despite many changes in appearance and features during its lengthy history. Analogizing these changes to “costume changes that do not alter the Batmobile’s innate characteristics, any more than James Bond’s change from blue swimming trunks (in Casino Royale) to his classic tuxedo affects his iconic character,” the court held that the Batmobile was a protectable character in the Batman comic books.


The court next held that the portrayals of the Batmobile in the 1966 television show and the 1989 motion picture were “derivative works” of the Batmobile character depicted in Batman comic books, and thus were protected by DC’s copyright in those comic books. Significantly, the facts that those portrayals on TV and in film were independently copyrightable, were covered by design patents, and did not appear in the copyrighted comic books, did not remove them from the scope of DC’s copyrights. The court emphasized that the addition of copyrightable original material was always involved in the creation of derivative works, but that original authors may nonetheless sue for infringement of those derivative works, when the infringement also implicates material covered by the original, underlying copyrights.


This decision was not unexpected, and there was no dissenting opinion; it is an incremental continuation of the Ninth Circuit’s existing jurisprudence, which is well settled to protect comic book characters and their three-dimensional realizations. Although the case attracted substantial public attention, because of its well-known subject matter, the most notable legal aspect of the decision is its codification of the three-part test for determining the copyrightability of a visually depicted character.


Keywords: intellectual property, litigation, Batmobile, DC Comics, Ninth Circuit, design patent, copyright infringement


George H. Carr, Janik L.L.P., Cleveland, OH


October 1, 2015

Defense of Laches Preserved in SCA Hygiene Products v. First Quality Baby Products

On September 18, 2015, the en banc Federal Circuit issued a decision in SCA Hygiene Products Aktiebolag, et al. v. First Quality Baby Products, LLC, finding that the defense of laches continues to apply as a bar to recovering damages in patent infringement lawsuits. SCA Hygiene comes in the wake of Petrella v. Metro-Goldwyn-Mayer, Inc., a 2014 U.S. Supreme Court case holding that the defense of laches does not apply in copyright infringement lawsuits for the recovery of damages. The en banc court in SCA Hygiene largely based its decision on section 282(b)(1) of the Patent Act codifying laches as a defense.


The underlying litigation in Petrella centered on the 1980 film Raging Bull. Frank Petrella, who wrote the original screenplay in 1963, assigned his rights to a production studio that eventually assigned the rights to Metro-Goldwyn Mayer. When Frank Petrella died the renewal rights in the screenplay passed to Petrella’s daughter. Petrella’s daughter renewed the copyright for the screenplay in 1991, but did not sue MGM for copyright infringement until 2009. The suit sought damages only for infringement dating back to 2006, as allowed by the Copyright Act. MGM asserted the defense of laches as a reason justifying summary judgment. The suit reached the Ninth Circuit, which found laches to be a viable defense.


After the case was appealed to the U.S. Supreme Court, Justice Ginsburg announced the Court’s decision reversing the Ninth Circuit. The Court reasoned that Petrella only sought to recover damages for actions occurring from 2006 to 2009 and could not be barred under laches because she was complying with the Copyright Act’s requirements. Justice Ginsburg also emphasized that laches was created by courts of equity and found its principal purpose in claims for equity.Justice Breyer dissented and argued that the modern litigation structure purposefully created defenses like laches to address inequities in the judicial process.


In SCA Hygiene, the district court had granted summary judgment in favor of defendant First Quality based on the doctrine of laches. A panel of the Federal Circuit affirmed. The panel stated that Petrella did not remove laches as a defense in patent infringement claims for damages. SCA appealed to the Federal Circuit en banc, which upheld the panel’s decision that laches remains a viable defense in patent infringement actions.


The majority opinion, announced by Chief Judge Prost, distinguished SCA Hygiene from Petrella by noting that, unlike copyright law, patent law codifies the laches defense in the Patent Act. The Patent Act states that “noninfringment, absence of liability for infringement or unenforceability” are defenses in actions involving the validity or infringement of a patent. The majority opinion found that Congress intended for the reach of this section to be broad and to encompass the defense of laches. After determining that laches was codified, the majority opinion concluded that laches is an available defense in patent law to bar monetary damages. The majority opinion further concluded that laches continues as a defense to claims of equity such as an injunction but cannot be used to bar an ongoing royalty.


Judge Hughes dissented, writing that the majority ignored the implications of Petrella and misinterpreted congressional intent. Judge Hughes emphasized that the Supreme Court has often cautioned the Federal Circuit from creating special rules for patent cases. Judge Hughes disagreed that congressional intent is clear in allowing laches to bar claims for monetary relief and expressed concern that the majority essentially ignored Supreme Court precedent.


After SCA Hygiene, a defendant in a patent infringement case may still be able to raise a patent laches defense in a suit brought within the 6-year period outlined in the Patent Act. The defense of laches remains available to prevent an injunction; however, the defense may not prevent an order to pay an ongoing royalty.


Keywords: intellectual property, litigation, SCA Hygiene, Petrella, laches, copyright, infringement

Jarrad Wood, Unified Patents and Ronny Valdes, Office of Policy Planning at the Federal Trade Commission, Washington, D.C.


September 30, 2015

California Court Rules No Copyright Protection for "Happy Birthday to You"

Last week, in Rupa Marya, et al. v. Warner/Chappel Music, Inc., et al., No. CV 13-4460-GHK (C.D. Cal. Sept. 22, 2015), U.S. District Judge George H. King ruled (log-in required) that defendant Warner/Chappel Music has no enforceable copyright in the ubiquitous song “Happy Birthday to You.” The ruling resolves cross motions for summary judgment filed in November 2014 by Warner and by the representative plaintiffs in this class action suit, challenging Warner’s assertion of copyright in the song and seeking recoupment of millions of dollars of licensing fees collected by Warner over the years. The catalyst for this litigation: Warner’s demand that plaintiff Good Morning to You Productions, which planned to make a documentary about the song, pay a $1,500 license fee as a condition of incorporating “Happy Birthday” into the documentary’s production.

The controversy focused exclusively on the lyrics to “Happy Birthday to You,” all parties conceding that the famous musical melody had passed into the public domain long ago. Copyright law for musical compositions recognizes separate, independent rights in the music and in the words accompanied by the music. Warner asserted that it was the successor to a copyright covering the lyrics that had been registered in 1935. The plaintiffs contended that that copyright registration only covered a particular piano arrangement of the music and did not cover the lyrics, which plaintiffs claim are in the public domain.

The melody that we all know as “Happy Birthday” was originally composed in the late nineteenth century as a children’s song with different lyrics, titled “Good Morning to You,” by sisters Mildred and Patti Hill. An evidentiary record resembling an archeological dig, covering documents, press reports, court testimony and other material from the turn of the twentieth century through the early 1940s, could not conclusively resolve who actually wrote the lyrics (maybe Patti Hill, maybe someone else). But Judge King, in an exhaustive 43-page memorandum and order, emphatically concluded that Warner had failed to produce any evidence sufficient to prove, or even to support a reasonable inference, that the author of those famous words had ever transferred her copyright in the “Happy Birthday” lyrics to the entity that had filed the 1935 copyright registration. Therefore, Warner’s claim of copyright ownership as successor in interest to that copyright registration fails. As an extension of this ruling, both the lyrics and the music of “Happy Birthday” are presumably in the public domain.

Subject to any reconsideration or modification of this ruling, the court will next turn to adjudication of the plaintiff class’s claims for recoupment of licensing fees unlawfully collected by Warner based on a non-existent copyright on the “Happy Birthday” lyrics. This decision is not yet final and is subject to appeal.

Keywords: intellectual property, litigation, Happy Birthday to You, music copyrights

C. Dennis Loomis, BakerHostetler, Los Angeles, CA


September 30, 2015

Federal Circuit Addresses Willful Blindness Analysis in Suprema v. ITC

On September 14, 2015, the Federal Circuit issued a non-precedential opinion in Suprema v. ITC. The court’s opinion emphasizes that a finding of willful blindness ultimately turns on a totality-of-the-circumstances analysis.

The case, which reached the Federal Circuit on appeal from the International Trade Commission, focused on a set of patents relating to fingerprint scanning. In the underlying ITC action, Cross Match Technologies, Inc., alleged violations of section 337 against Suprema, Inc., and Mentalix, Inc. After finding that Suprema and Mentalix directly infringed one of the patents at issue and that Suprema had induced Mentalix’s infringement, the ITC issued a cease-and-desist order and an exclusion order. On appeal, a Federal Circuit panel affirmed in part but vacated the ITC’s inducement finding on the grounds that no inducement occurred if the imported items did not infringe at the time of importation.

On rehearing en banc, the Federal Circuit reversed the panel’s decision, upholding the ITC’s interpretation that induced infringement under section 337 covers infringement occurring after the time of importation. Chief Judge Prost, joined by Judges O’Malley and Reyna, heard the case on remand. Judge O’Malley announced the opinion of the court.

Suprema was Willfully Blind to Mentalix’s Infringement
After affirming the commission’s finding of direct infringement, the court addressed whether Suprema was willfully blind to Mentalix’s infringement. Following Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2063 (2011), the court explained that inducement requires knowledge that the induced acts constitute patent infringement. This knowledge can be actual knowledge—or willful blindness. Willful blindness is established by (1) a subjective belief of a high probability that a fact exists and (2) deliberate action to avoid learning that fact. Citing Broadcom Corp. v. Qualcomm, Inc., 543 F.3d 683, 699 (Fed. Cir. 2008), the court confirmed that “[t]he requisite intent to induce infringement may be inferred from all of the circumstances, and may be established through circumstantial evidence.”

Suprema Subjectively Believed in Probability that Mentalix Infringed Cross Match’s Patent
The court cited a number of factual findings by the commission going to the first element of the willful-blindness analysis:

  • Suprema’s admission that it researched and identified Cross Match’s patents, which had overlapping inventors and assignees with the patent at issue;

  • Suprema was well aware of competitor products, and of Cross Match’s prominence in the relevant market;

  • Suprema’s market research was similar in scope to the analysis performed by the accused infringer in Global Tech; and

  • Substantial evidence that Suprema aided and abetted Mentalix in adapting Mentalix’s software to practice Cross Match’s patent.

The court also rejected the idea that parties must seek out every reference in a competitor’s patent. In this case, market research and similarities in the “content, inventorship, and ownership” between the infringed patent and other patents involved in the case provided the required substantial evidence.

Suprema Took Deliberate Action to Avoid Learning that Mentalix Infringed Cross Match’s Patent
The court also affirmed the commission’s finding that Suprema deliberately avoided learning that Suprema’s “own accused products would likely infringe Cross Match’s patents.” The court focused on Suprema’s failure to obtain an opinion of counsel as evidence of Suprema’s willful blindness. The failure to obtain an opinion of counsel, the court explained, goes to state of mind; however, the failure to obtain an opinion of counsel is not dispositive of willful blindness, and an “opinion of counsel is not required to avoid a finding of induced infringement.”

In a footnote, the court addressed section 298 of the AIA, which forbids using the failure to obtain an opinion of counsel as evidence of induced infringement, by noting that “[b]ecause the AIA only applies to patents issued on or after September 16, 2012, and the [patents at issue] issued in 2007, this provision does not control here.”

Suprema confirms that the willful-blindness analysis is not amenable to bright-line rules or dispositive facts, but requires thoughtful consideration of all relevant factors on a case-by-case basis. The court’s opinion will also likely increase the value of opinions of counsel.

Jarrad L. Wood, Unified Patents, Washington, D.C.


September 16, 2015

Digital Millennium Copyright Act Through the "Lenz" of Fair Use

The Ninth Circuit issued an opinion in the heavily followed “dancing baby case,” holding that copyright owners must consider an alleged infringer’s defense of fair use before sending a notice under the Digital Millennium Copyright Act (DMCA). Moreover, a copyright owner that fails to conduct a fair use analysis prior to sending a DMCA notice could be subject to a damages claim.


The facts of the case originate in 2007, when Stephanie Lenz posted a video to YouTube entitled “Let’s Go Crazy #1,” a 29-second video of a baby dancing to Prince and the Revolution’s 1984 hit song “Let’s Go Crazy.” Universal Music Corp. and related entities (Universal), which controlled the Prince song, evaluated whether the song “was recognizable, was in a significant portion of the video or was the general focus of the video” according to its enforcement guidelines. After considering that (i) the music played loudly in the background, (ii) the music played throughout the entire video, (iii) the song name was the title of the video, and (iv) the song was discussed during the video (the mother asks her dancing son, “What do you think of the music?”), Universal issued a takedown notification to YouTube.


Lenz received a letter from YouTube explaining that “Let’s Go Crazy #1” was taken down from YouTube. In response, Lenz issued a DMCA counter-notification and eventually succeeded in restoring “Let’s Go Crazy #1” to YouTube. Lenz also sued Universal, in Lenz v. Universal Music Corp., 13-cv-16106, 13-16107, on the basis that Universal misrepresented that it had a good faith belief that the video infringed Prince’s song. The video is still available on YouTube. Lenz’s claims were winnowed to one cause of action under the DMCA Section 512(f), which imposes liability where a copyright owner “knowingly materially misrepresents … that material or activity is infringing.”


As required by 17 U.S.C. § 512(c)(3)(A)(v), Universal’s takedown notification to YouTube included a statement indicating that Universal had a “good faith belief that the above-described activity is not authorized by the copyright owner, its agent, or the law.” It is the last portion of the statement—“or the law”—that became the focus leading to the ruling.


Universal argued that fair use is an affirmative defense that excuses otherwise infringing content and that, therefore, it is not part of “the law” contemplated by Section 512(c)(3)(A)(v). The Ninth Circuit disagreed and found that since fair use is expressly authorized by Section 107 of the Copyright Act, it is incorrect to consider it an affirmative defense that excuses otherwise impermissible conduct. Rather, the court considered fair use an affirmative defense in the same way that a license is an affirmative defense—only in the sense of its procedural posture. It went on to explain that even if fair use were an affirmative defense excusing otherwise impermissible conduct, it is uniquely situated such that for purposes of the DMCA it should not be treated as such.


Lenz argued that Universal should have known the video was a fair use. Citing a Ninth Circuit decision from 2004, the court found that a copyright holder need only form a subjective good faith belief that a use is not authorized. Lenz argued that Universal did not form any subjective belief about the video’s fair use because it failed to consider fair use at all and knew it failed to do so. Universal contended that its guidelines essentially amounted to a consideration of fair use. The Ninth Circuit found that the question whether Universal’s actions were sufficient to form a subjective good faith belief is for a jury to decide.


The Ninth Circuit explained that determining whether a copyright holder “knowingly materially misrepresent[ed]” its “good faith belief” that the activity is not fair use could be established by a “willful blindness” showing. (However, it held that in this case, Lenz did not present evidence that Universal believed there was a high probability that the video was a fair use and therefore could not proceed to trial on a willful blindness theory which requires such a showing.) But the Ninth Circuit decision also balanced the needs of copyright owners, citing the “pressing crush of voluminous infringing content that copyright holders face in a digital age.” Striking that balance, the Ninth Circuit indicated that the consideration of fair use “need not be searching or intensive.” The decision guides “without passing judgment” that the “implementation of computer algorithms appear to be a valid and good faith middle ground for processing a plethora of content while still meeting the DMCA’s requirements to somehow consider fair use.” And the court ruled that Lenz may recover nominal damages as a result of Universal’s actions without showing monetary loss, because the “DMCA is akin to a statutorily created intentional tort.”


Lenz is represented in part by the Electronic Frontier Foundation (EFF). The EFF press release discusses far-reaching censorship and free speech ramifications of this issue. In the press release, the EFF states that the ruling “sends a strong message that copyright law does not authorize thoughtless censorship of lawful speech.”


Keywords: intellectual property, litigation, free speech, DMCA, Digital Millennium Copyright Act, Lenz, YouTube, infringement


Maryanne Stanganelli, BakerHostetler, New York, NY



August 25, 2015

Commil v. Cisco Systems: Nixing Good Faith Belief in Invalid Patent

On May 26, 2015, the United States Supreme Court decided in Commil USA, LLC v. Cisco Systems, Inc., that a defendant’s good faith belief that a patent is invalid is no defense to a claim for induced infringement of that patent under 35 U.S.C. § 271(b).


Justice Kennedy, writing for the majority, first clarified the scienter element of induced infringement, which was set forth in the Court’s 2011 decision in Global-Tech Appliances, Inc. v. SEB S.A. Under Global-Tech, to prove induced infringement, “it is necessary for the plaintiff to show that the alleged inducer knew of the patent in question and knew the induced acts were infringing.”


Yet the Court concluded in Commil that it does not follow that a defendant’s good faith belief that a patent is invalid is tantamount to a good faith belief that the patent is not infringed and thus that the defendant does not “know” under Global-Tech that the actions it induced were infringing. First, infringement and validity are separate issues under the Patent Act, and thus belief regarding validity cannot negate the scienter required for induced infringement. Second, to create a good faith belief in invalidity defense would undermine a patent’s statutory presumption of validity and circumvent the clear and convincing evidence standard required to rebut that presumption. Third, invalidity is not a defense to infringement, but a defense to liability for infringement, so a belief as to invalidity cannot negate the scienter required for induced infringement. Fourth, accused infringers already have numerous proper ways to challenge the validity of a patent: in declaratory judgment actions, inter partes reviews, ex parte reexaminations, and of course by raising invalidity as an affirmative defense in a district court action for patent infringement. Fifth, such a defense would increase the burdens of litigation, motivating defendants to multiply their invalidity theories, increasing discovery costs and potentially creating confusion for the jury, who would have to separate the issue of the defendant’s belief regarding validity of the patent from the actual question of validity. Finally, principles of tort and criminal law make clear that an act can still be intentional even though the actor does not think it violates the law.


The result in Commil clearly favors patent holders. And so perhaps prodded by the statement in Justice Scalia’s dissent (joined by Chief Justice Roberts) that the Court’s decision “increases the in terrorem power of patent trolls,” the majority opinion concludes with a brief but noteworthy discussion of companies who “may use patents as a sword to go after defendants for money, even when their claims are frivolous.” In light of this threat, the majority found it “necessary and proper to stress that district courts have the authority and responsibility to ensure frivolous cases are dissuaded.” To do so, they may seek to impose Rule 11 sanctions against attorneys who file frivolous lawsuits, and award attorney’s fees to prevailing parties in exceptional cases, consistent with the Court’s ruling in Octane Fitness, LLC v. ICON Health & Fitness, Inc. This exhortation is remarkable because, as the Court states, “[n]o issue of frivolity has been raised by the parties in this case, nor does it arise on the facts presented to this Court.” Thus it appears that the Court was simply looking for an opportunity to express its serious concern about the harmful effects of frivolous patent lawsuits. Many patent defendants have complained about this problem for years. They will thus take heart—and likely frequent quotations for Rule 11 and attorney fee motions—from the Commil opinion for years to come.


Keywords: intellectual property, litigation, patent, infringement, good faith, invalid, Commil, Cisco Systems


James L. Day and Erik C. Olson, Farella Braun + Martel LLP, San Francisco, CA



August 5, 2015

Defend Trade Secrets Act of 2015 Introduced in House & Senate

The push toward a federal trade secrets statute continues in the 114th Congress, with S. 1890 being introduced by Senators Hatch, Coons, Flake, Durbin, Tillis, and Baldwin on July 29, 2015. An identical House bill, H.R. 3326, was introduced by Representatives Collins, Nadler, Holding, Conyers, Chabot, and Jeffries. The bills represent a continuation of bipartisan legislative efforts from last year to create federal jurisdiction over trade secret misappropriation by adding a private civil cause of action to the Economic Espionage Act (EEA).


Leading trade secrets litigator R. Mark Halligan of FisherBroyles in Chicago has authored a law review article calling for Congress to finish the progress it made last year, when a previous version of the bill was favorably reported out of the House Judiciary Committee. Revisited 2015: Protection of U.S. Trade Secret Assets: Critical Amendments to the Economic Espionage Act of 1996, 14 J. MARSHALL REV. INTELL. PROP. L. 656 (2015), examines the shortcomings of the EEA as a deterrent to trade secret theft, as well as types of changes that lawyers can expect to be implemented by the pending legislation.


Because so few criminal prosecutions have occurred under the EEA, Halligan notes, the addition of a private civil cause of action is a critical tool for U.S. companies to address actual and threatened trade secret misappropriation. And federal jurisdiction over such claims will provide nationwide subpoena power, streamlining litigation and avoiding delays that occur in state court when witnesses are outside the jurisdiction of the forum court. Finally, a provision allowing for ex parte seizure orders will allow courts to preserve the status quo while the merits of the case are litigated, preventing the destruction or concealment of trade secret assets. The bill provides procedural safeguards to protect against abuse of the ex parte seizure authority by requiring that the issuing court provide written findings of fact and conclusions of law and conduct a hearing within seven days of issuing the order.


After seven years of vetting bills that would amend the EEA to provide a private cause of action and allow for ex parte seizure orders, Halligan argues, the time has come for Congress to act. The recent introduction of the Defend Trade Secrets Act of 2015 in both houses is certainly a step in the right direction.


Keywords: intellectual property, litigation, Economic Espionage Act, EEA, federal trade secrets, ex parte seizure order, Defend Trade Secrets Act of 2015


Lesley McCall Grossberg, BakerHostetler, Philadelphia, PA



July 31, 2015

DC Comics: Trademark Police

DC Comics seems to have adopted Batman’s crime-fighting ways, as evidenced by the recent aggressive policing of their iconic trademarks. In a recent legal dust-up with a major pop star, DC Comics is attempting to block Rihanna’s company, Roraj Trade, from registering the mark “Robyn,” Rihanna’s legal name. Roraj Trade applied to register the name last June, intending to publish an online magazine adding to her ever-expanding line of products. DC Comics filed its opposition on May 11, arguing that Rihanna’s use of “Robyn” is likely to lead to brand dilution by blurring and tarnishing their ROBIN mark. The proceeding is currently suspended for settlement discussions.


DC Comics most recently filed a lawsuit for counterfeiting and trademark and copyright infringement over a shirt substituting the word “dad” for the “S” in the iconic five-sided diamond Superman logo. The logo first appeared in 1938 and has remained mostly unchanged since. Defendant Mad Engine, Inc., is a California apparel company that sells to retailers such as Target, Wal-Mart, and Amazon.com. On its website, Mad Engine claims it is a licensed apparel wholesaler of various recognizable brands such as Star Wars and Marvel Products; however, Mad Engine is producing and distributing their “Super Dad” t-shirts without DC Comics’ permission. DC Comics has its own “Super Dad” t-shirt with the word “dad” in red printed below the Superman logo. DC Comics is seeking damages, costs including attorneys’ fees, and the destruction of Mad Engine’s “Super Dad” shirts.


Superman1    Superman2
Fig. 1. Mad Engine shirt; DC Comics licensed shirt


Even small mom-and-pop businesses are not safe from DC Comics’ hunt for potential infringers. In 2010, DC Comics sent a cease-and-desist letter to the Broussard brothers when they applied to register the mark “BATS BBQ,” which is an acronym for their (now closed) BBQ restaurant. The brothers created the name and logo on the family computer in Fort Mill, South Carolina. Their restaurant did not have a movie or comic-book theme. Additionally, in 2013, DC Comics settled a trademark infringement lawsuit against a Florida barbershop owner who allegedly used the Superman logos with permission. DC Comics agreed to settle its suit with Reginal B. Jones, the owner of two barbershops named “Supermen’s Fades to Fro’s” and “Supermen Fades to Fros.” Jones also used promotional material that allegedly infringed DC Comics’ “Superman” trademarks.


Batman1    Superman3
Fig. 2. DC Comics battles infringements by mom-and-pop businesses.


DC Comics has also expanded their policing over international borders going after La Liga giants Valencia for using a bat as their club crest. In May 2013, DC Comics lodged its opposition with the Office of Harmonization in the Internal Market, the European Union’s trademark arm. The Spanish soccer club has been using a bat on their crest since 1919, twenty years before Batman made his debut. More importantly, the use of the bat as Valencia city’s crest is reported to date back to the 13th century, when a bat was said to have landed on the flag of James I when he re-took Valencia from the Moors.


Fig. 3. Batman’s logo (created 1939) and Valencia’s club crest (founded 1919)


Has DC Comics gone too far in their quest to clean the streets of infringers? Who’s next? Looking at DC Comics’ track record, no one is immune, even deceased children.


Keywords: intellectual property, litigation, DC Comics, copyright infringement, logo, trademark, Batman, Superman


—Jessica S. Nam, The George Washington University Law School, Class of 2017, Washington, D.C.



July 13, 2015

Cancellation of Washington Redskins' Trademark Registration Upheld

The Washington Redskins trademark registration saga was supplemented by an Eastern District of Virginia ruling this past Wednesday, in which Judge Gerald Bruce Lee upheld the Trademark Trial and Appeal Board’s decision to cancel Pro-Football Inc.’s trademark registrations because they are disparaging to Native Americans, in violation of section 2(a) of the Lanham Act. The court also reaffirmed the constitutionality of section 2(a), holding that it does not violate the First Amendment, is not void for vagueness, and does not violate the Due Process or Takings Clauses of the Fifth Amendment.

Denying Pro-Football’s motion for summary judgment based on the claim that section 2(a)’s restrictions on trademark registration violate the First Amendment, the court held that section 2(a) does not burden free speech, public discourse, or the ability to use the mark in commerce. In what can only be described as a judicial slam dunk, Judge Lee aptly referenced Allen Iverson to illustrate his point.


Just as Allen Iverson once reminded the media that they were wasting time at the end of the Philadelphia 76ers’ season “talking about practice” and not an actual professional basketball game, the Court is similarly compelled to highlight what is at issue in this case—trademark registration, not the trademarks themselves.

The court further held that the federal trademark registration program is government speech exempt from First Amendment scrutiny under the Walker, Fourth Circuit, and Rust tests. Just as in Walker v. Tex. Div, Sons of Confederate Veterans, Inc., where a Texas specialty license plate program was held to be government speech, the Virginia court held that the trademark registration program is government speech that (1) communicates a message of government approval, (2), is closely associated with the government in the minds of citizens, and (3) allows the government to exercise editorial control over which marks are ultimately registered. Subscribing to the Fourth Circuit’s “hybrid” test, the court found the registration program to have a central government purpose (i.e., the approval of trademarks) for which editorial control is exercised by the government. However, the court held that one factor in this analysis did militate against a finding of government speech: trademark owners are the ones ultimately responsible for the content of this speech, as they apply for registration and defend their marks against government challenge. Finally, the court relied on the reasoning in Rust v. Sullivan, where the Supreme Court held that the government did not violate the First Amendment when it prevented doctors from using Title X funding to engage in abortion-related activities because “when the Government appropriates public funds to establish a program it is entitled to define the limits of that program.” Applying that logic to section 2(a) of the Lanham Act, the court held that the restriction on the registration of “disparaging” marks is within the government’s constitutional ambit, particularly because participation in the registration program is not mandatory.

The court also denied Pro-Football’s motion for summary judgment on the issue of section 2(a) being void for vagueness. The court held that the law is not enforced discriminatorily and provides fair warning of what kinds of marks are prohibited. Furthermore, the court held that the copious evidence—dictionary, socially, and culturally-based—confirming the term “redskins” as disparaging to Native Americans at the time Pro-Football’s trademarks were registered also provided the defendant with ample opportunity to grasp the derogatory nature of its marks.


Finally, the court denied Pro-Football’s motion for summary judgment concerning the Due Process and Takings Clauses, holding that these claims failed because trademarks do not constitute property for Fifth Amendment purposes. The court also rejected Pro-Football’s laches claim, holding plaintiff Amanda Blackhorse had petitioned TTAB in a timely fashion and that the public interest in this case moving forward outweighed a laches finding.


Keywords: intellectual property, litigation, Washington Redskins, trademark, logo, Lanham Act, Pro-Football


Jessica Watkins, BakerHostetler, Philadelphia, PA



July 8, 2015

Marvel Entertainment and the Patent on Spider-Man's Web

In Kimble v. Marvel Entertainment, LLC, 576 U.S. ____ (2015), the Supreme Court, in a 6–3 decision, with Justice Kagan writing for the majority, upheld its 1964 decision in Brulotte v. Thys, 379 U.S. 29, reaffirming that a patent owner cannot charge royalties for use of the patent after the patent term expires.


Stephen Kimble patented a device that allows the user to shoot pressurized foam string from the palm of the hand, like Spider-Man shooting web. He pitched his idea to Marvel, who apparently liked it but nonetheless declined to engage in a licensing agreement. Kimble sued for patent infringement when Marvel began manufacturing and selling its own “Web Blaster” toy. Pursuant to a settlement agreement, Marvel purchased the patent for a lump sum and agreed to pay Kimble a 3 percent royalty on future sales. The parties did not negotiate an end date for the royalty payments, but before the patent term expired, Marvel asked for and received from federal district court in Arizona a declaratory judgment that it could avoid the royalty payments upon expiration of the patent. Relying on Brulotte, the district court held that the agreement to pay royalties was unenforceable after expiration of the patent term. The Ninth Circuit affirmed, and Kimble appealed.


The only issue before the Supreme Court was whether or not Brulotte should be overruled. Arguing that it should, Kimble urged the Court to adopt antitrust law’s “rule of reason” over the bright-line rule of Brulotte. Kimble argued that a case involving post-expiration patent royalties requires a “full-fledged economic inquiry” into the particular practice’s “history, nature, and effect” in the relevant market. Because many post-expiration royalty agreements, including the one at issue, are not anticompetitve, Kimble argued, the Court should allow them as satisfying antitrust law’s “rule of reason.”


The Court was not persuaded that economic realities, or even contractual realities, could overcome patent law’s own provisions and stare decisis. The Court reasoned that even if Brulotte was wrong, the merits of upholding it as a settled rule of law outweigh the benefits of overturning it in favor of a new rule. Kimble’s economic contentions presented no “special justification” for abandoning stare decisis. Kimble’s proper audience, the Court made clear, is Congress. Moreover, since the 1964 decision, “Congress has spurned multiple opportunities” to legislatively correct Brulotte’s perceived flaws. Congress’s long acquiescence therefore enhances the staying power of the Brulotte bright-line rule against post-expiration royalties.


Finally, Kimble invoked principles of patent law itself in attempt to discredit Brulotte, arguing that its bright-line prohibition against post-expiration royalties suppresses technological innovation by limiting access to patented technology for would-be-licensees. Largely declining to entertain the economic arguments, the Court pointed out that alternative royalty arrangements remain possible under Brulotte. Such alternative arrangements might include deferring payments for pre-expiration use of a patent into the post-expiration period; tying post-expiration royalties to a non-patent right, such as a trademark or trade secret; or entering a joint venture or other business arrangement that allows parties to share the risks and rewards of commercializing an invention.


Justice Alito’s dissent, joined by the Chief Justice and Justice Thomas, sided with Kimble on the basis that Brulotte was wrongly decided and should be overruled. Stare decisis, they reasoned, does not require adherence to a per se rule based on an economically flawed “bald act of policymaking.”


Ultimately, the Court upheld Brulotte and affirmed the district court’s holding that the royalty agreement between Kimble and Marvel was unenforceable after the expiration of the patent term. Statutory stare decisis and patent law’s strict enforcement of a limited patent term (still) do not allow for post-expiration royalties.


Keywords: intellectual property, litigation, stare decisis, Kimble, Marvel, Spider-Man, patent, patent technology, patent expiration, royalties, Brulotte


Samuel A. McMahon, University of New Hampshire School of Law, Class of 2016, Concord, NH



June 30, 2015

Instagram, Copyright, and the Art of Richard Prince

In September 2014, controversial artist Richard Prince released his newest exhibition, “New Portraits,” in an upscale Manhattan art gallery. By “new,” Prince meant screenshots of photos taken by Instagram users that he has enlarged and printed. The most shocking revelation was that his re-prints sold at the exhibition for around $90,000 apiece. Because of this, copyright lawyers, artists, and “regular Joes” on Instagram are beginning to question what forms, if any, of copyright law Prince could be violating.


This is not Prince’s first run-in with copyright issues. In 2011, he added graffiti blobs to photos from the book “Yes Rasta” and sold them as his independent works. The original photographer sued Prince for copyright infringement. At the appellate level, the Second Circuit held that Prince had not infringed the copyrights of the original photographer since Prince’s work was transformative of the original documents. Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013). The court found that Prince’s additions to the original picture—for instance, a cartoon guitar—changed the overall meaning of the picture enough to be considered transformative and qualify as a fair use of the original works.


Thus, the question arises as to whether his “New Portraits” are transformative. As from the previous case, all Prince must do is make a slight adjustment to the original in order to make it his own. In this instance, he did not copy and reprint pictures posted by other Instagram users, rather he took a screenshot of the entire Instagram interface, which included the picture and an individualized comment that Prince personally added to the post via the Instagram “comment” feature. Prince then enlarged the photos to life-size versions, slightly pixelating them. Although Prince seems to relish pushing the boundaries of fair use, these changes are likely to be considered transformative, particularly since the resulting “New Portrait” is different in both meaning and looks than the original posted by the Instagram user.


The “New Portraits” collection is not too far removed from the work of legendary artists Andy Warhol and Jasper Johns. Both artists famously used a mainstream object that was not of their creation (Campbell’s soup and the American flag) and transformed it into famous works of art in their own right. This follows the notion that all forms of art must have some sort of originating point or material. In this age of social media, shared digital photos are apparently materials and can be used as elements an artist uses to create his work. Using a photo as the basis or part of a piece of art is no different than using any other material (think again Campbell’s soup or the American flag).


Some art critics believe this collection by Prince is destined to hurt the artistic field by allowing a free-for-all to use other’s material. More likely, Prince is simply illustrating the changing expectations of privacy and ownership that have evolved with social media platforms like Instagram. A recent district court case from Michigan illustrates this observation, where the court held that a reasonable person would not find it objectionable to obtain a photo someone else previously posted publicly on a social media page. Binion v. O’Neal, 2015 U.S. Dist. LEXIS 43456 (E.D. Mich. 2015). Since the plaintiff had already publicly posted the picture on his public Instagram account, the court explained, the picture was no longer private.


Despite the public hand-wringing over his exhibition (which is probably the reaction he was seeking) this transformation is probably enough in order to not violate any copyright infringement laws.


Keywords: intellectual property, litigation, copyright infringement, Instagram, Richard Prince, New Portraits, transformative, art


—Robby Anderson, University of Alabama School of Law, Class of 2017, Tuscaloosa, AL



June 30, 2015

Ninth Circuit Reversal in the 'Innocence of Muslims' Saga

By overturning its original opinion in Garcia v. Google, Inc. the Ninth Circuit has cured most of the headaches it caused the legal community and copyright owners. Cindy Lee Garcia sued Google (as YouTube’s parent company) for refusing to take down a film she had appeared in. Her original discourse had been altered post-production to insult the Islamic faith. The film, Innocence of Muslims, infuriated many in the Muslim community and caused Garcia to receive death threats. In 2014, a Ninth Circuit panel overturned the district court’s denial of a preliminary injunction seeking to have the video removed. (See a more thorough summary of the original opinion. See the full text of the original opinion.) Complaints about the decision were swift and vocal, ranging from considerations of the utilitarian purpose of copyright law to First Amendment concerns. Although the anxiety caused by the Ninth Circuit’s original opinion has been eased by its recent en banc decision, the problematic situation that drove Cindy Lee Garcia to request an injunction remains.


The biggest problem with Judge Kozinski’s original opinion was the leverage it gave even the smallest contributor to a larger copyrighted work. Judge Kozinski’s decision found that actors and actresses have a personal copyright interest in their performance, stemming from their creativity in bringing a role to life. That creativity included facial expressions, body language, and reactions to other actors and elements in a scene. The decision dodged the work-for-hire doctrine by finding that Garcia was not an employee and the film’s producer was not in the “regular business” of filmmaking. Judge Kozinski also found that Garcia had given an implied license, but that the producer went beyond its limitations.


As Judge McKeown explained in the Ninth Circuit’s en banc decision, this theory would allow any minor participant in a larger production to hold it hostage based on copyright claims to random bits and pieces. Even using licensure would create a nightmare for the distribution chain. Essentially, this theory would turn a “cast of thousands” into a “copyright of thousands” in many popular movies like Lord of the Rings. The en banc decision set things straight by saying that neither the Copyright Act nor the Copyright Office’s interpretation supported Garcia’s claims, so she likely could not succeed on the merits.


The en banc decision also quieted the fears of many who called Garcia a prior restraint on speech. The three judge panel required Google to take the video down, which prevented public access to the film. In the en banc opinion, Judge McKeown noted Garcia’s claim was not “garden-variety” copyright infringement, but was a request to remove speech from the public sphere. She noted this type of prior restraint poses the “most serious and the least tolerable” restriction on First Amendment rights. Garcia’s claim was not strong enough to overcome the deep commitment to protecting political speech, which was threatened by the Ninth Circuit’s original opinion.


A DMCA takedown and copyright action was not the appropriate means of achieving Garcia’s ultimate goal—the removal of the video. The original Ninth Circuit opinion was a classic example of the maxim “bad facts make bad law.” However, plaintiffs seeking to have defamatory or potentially harmful materials removed from the internet still have a problem. Judge McKeown noted in her opinion that the court did not take Garcia’s emotional turmoil lightly, but she recognized copyright law could not offer her any help. Without a proper remedy for plaintiffs like Garcia, the potential for creating bad law from these types of bad facts remains.


Keywords: intellectual property, litigation, first amendment, Kozinski, Google, Cindy Lee Garcia, copyright


Christina Rossi, Washington and Lee University School of Law, Class of 2016, Lexington, VA




June 30, 2015

Form over Substance: The Bizarre Tyranny of the Copyright Registration Certificate

A United States copyright registration certificate is a peculiar document, and one whose import has been elevated to a level that greatly exceeds its intended function. It was long thought of as a jurisdictional prerequisite to bringing and maintaining a copyright infringement based on 17 U.S.C. section 411, which states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” But in 2010, the U.S. Supreme Court in Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1248 (2010) clarified that “section 411(a)’s registration requirement is nonjurisdictional, notwithstanding its prior jurisdictional treatment” and that it does no more than “impose[s] a precondition to filing a claim. Id. at 1247 (emphasis added).


Despite Muchnick’s holding, alleged infringers still attempt to capitalize on the confusion between “copyright” and “copyright registration” by challenging the validity of the registration (not the copyright) at issue and arguing that a valid registration is required to prevail on a claim of infringement. Thus, if the registration is found invalid, the case should be dismissed for lack of jurisdiction. This is wrong.  


An author holds a copyright in his or her protectable expression the moment that expression is created, i.e., “fixed in a tangible medium.” Registration, on the other hand, is completely distinct from the copyright to which it pertains. The registration scheme was enacted to provide a quid pro quo—the artist submits a registration that includes a copy of their work to be indexed in the Copyright Office’s capacious library. See U.S. Copyright Office, Annual Report of the Register of Copyrights, Fiscal Year Ending September 30, 2007, at 13–14, 16 (Sept. 30, 2007); Library of Congress, Annual Report of the Librarian of Congress for the Fiscal Year Ending September 30, 2007, at 25 (2008) (“Each year, the Copyright Office registers more than 500,000 claims and transfers more than 1 million copyrighted works to the Library's collection through the copyright deposit system.”). The artist in return is given a presumption of ownership and the right to seek statutory damages and attorneys’ fees against anyone that infringes the artist’s rights in that registered work. An artist who has not registered his work at the time it is infringed is not just denied these valuable rights, but is denied access to the court until registration is at least attempted—thus enriching our national archives in the Library of Congress.


A “valid registration” is not required by the Act to prevail on an infringement claim. 17 USC section 411 expressly states that the registration is necessary to “initiate” an action, not to maintain or prevail in one. So, by the plain language of the statute, a registration obtained prior to the filing of the case should support a civil action, even where there is a later finding that the registration has an error or is “invalid.” Similarly, a copyright claimant is authorized to file suit where a registration application is denied so long as notice of the action is provided to the Copyright Office. Thus, defense arguments of “invalid registration” are specious.


All relevant Supreme Court authority compels the same conclusion. A copyright holder seeking to prove infringement must prove: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.”  Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir.2004). Importantly, the case law states that a “valid copyright” and not a “valid copyright registration” is required to prevail. Yet arguments over the validity of copyright registrations have consumed many billable and court hours as defendants advance such arguments in an attempt to evade liability for infringement.


Focusing on the “validity” of a registration is bizarre because such an approach ignores both the letter and the spirit of the Copyright Act. Indeed, 17 U.S.C. section 501, the section of the Copyright Act titled “Infringement of Copyright,” does not even mention the words “registration” or “certificate,” instead stating that infringement affects the “exclusive rights of the copyright owner as provided by sections 106 through 122.” 17 U.S.C. § 501 (emphasis added). And 17 U.S.C. section 106 states that the exclusive rights are granted to an “owner of copyright” and makes no mention of any rights being confined to a copyright holder who is also an owner of a copyright registration. Elsewhere, the Act is even more direct, stating that registration “is not a condition of copyright protection.” 17 U.S.C. § 408(a).


The inclusion of a requirement in one section of the Act, coupled with an omission in another section, makes clear the statutory construction: Congress’s inclusion of the word “registration” in section 411 and omission of this word from sections 501 and 106 establish that a registration is required only at the time of filing, and not thereafter. See Stewart v. Ragland, 934 F.2d 1033, 1041 (9th Cir.1991) (“When certain statutory provisions contain a requirement and others do not, we should assume that the legislature intended both the inclusion and the exclusion of the requirement.”). So, if a court finds a copyright owner’s registration to contain an error, and invalidates it on that basis, this invalidation should not affect the copyright holder’s ability to maintain the prosecution of its case (though it may affect its presumption of ownership and ability to seek statutory damages and attorneys’ fees).


At most, section 411 requires a copyright claimant to hold a registration only to “institute” an infringement claim. There is no requirement that this claimant must hold a “valid” registration throughout the pendency of the litigation, and any efforts to defeat otherwise meritorious copyright infringement claims by challenging the registration should always be rebuffed. 


Keywords: intellectual property, litigation, copyright infringement, copyright registration, Copyright Act, copyright certificate


—Stephen M. Doniger and Scott Alan Burroughs, Doniger / Burroughs, Venice, CA



May 28, 2015

Reformation Clauses No Savior in North Carolina

A recent decision has held that courts do not have the power to reform an overbroad restrictive covenant in an employment agreement, even when the agreement contains a reformation clause. The decision, Lab. Corp. of Am. Holdings v. Kearns, No. 1:14-CV-1029, 2015 WL 413788 (M.D.N.C. Jan. 30, 2015), reinforces that parties cannot rely on reformation clauses to save overbroad restrictive covenants. The better practice for drafters is to carefully research the applicable jurisdiction’s reasonableness requirements regarding length, geographic area, and scope. Drafters should then craft restrictive covenants narrowly within these parameters. This practice is particularly important in the relatively few jurisdictions that, like North Carolina, follow the outmoded, strict blue-pencil rule.


In Kearns, a former employee, Kearns, started a competing business and solicited customers from his former employer, LabCorp. Kearns’ employment agreement with LabCorp included non-solicitation and non-competition restrictive covenants. Kearns had also executed a separate agreement with LabCorp related to the sale of a business. LabCorp, however, did not seek to enforce the restrictive covenants contained in the sale agreement. LabCorp brought suit and moved for a preliminary injunction to enforce the employment agreement covenants.


In entering a preliminary injunction enforcing the non-solicitation covenant, the court found that the non-compete was likely overbroad and unenforceable. The court then employed a two-step process to determine whether it could modify the non-compete covenant to make it enforceable. First, it considered whether it could blue-pencil the non-compete. Some background here: jurisdictions vary widely in their willingness to blue-pencil or otherwise reform overly broad restrictive covenants. Many jurisdictions liberally allow for equitable reformation, whereas others allow only for limited revisions. North Carolina follows a common law doctrine known as the strict blue-pencil rule: “[a] court at most may choose not to enforce a distinctly separate part of a covenant in order to render the provision reasonable. It may not otherwise revise or rewrite the covenant.” Id. at *8. The Kearns court held that it lacked power under the blue-pencil rule to modify the non-compete covenant to make it reasonable.


Second, the court considered whether the agreement’s reformation clause empowered the court to reform the non-compete covenant despite its inability to do so under the blue-pencil rule. The clause stated that if a provision in the agreement were found unenforceable, it should be reformed and enforced to the maximum extent permitted by law. In determining whether the reformation clause would allow it to reform the non-compete, the court analyzed Beverage Sys. of the Carolinas, LLC v. Associated Beverage Repair, LLC, 762 S.E.2d 316 (N.C. Ct. App. 2014). In Beverage Systems, the trial court found that a restrictive covenant in a sale of business agreement was overbroad and thus unenforceable. The trial court refused to blue-pencil and refused to reform the agreement despite the agreement’s reformation clause. The appellate court reversed. The court held that the trial court should have enforced the parties’ agreement, which included giving effect to the reformation clause by reforming the overbroad restrictive covenant.


The court in Kearns, on an issue of first impression, rejected the extension of Beverage Systems’ holding into the employment context. The court stated that the rationale of Beverage Systems was inapplicable to employment-related non-competes. Noting that its decision was consistent with North Carolina’s general unwillingness to enforce and reform restrictive covenants, the court refused to reform the non-compete despite the reformation clause, and therefore it refused to preliminarily enjoin Kearns from competing with LabCorp.


This decision yields two takeaways. First, as discussed above, drafters should carefully research and narrowly draft restrictive covenants to ensure their enforceability, particularly in the employment context. Second, litigators should sue based on restrictive covenants contained in sales and franchise agreements, rather than employment agreements, when presented with that option. A court may be more likely to enforce and reform the former as opposed to the latter.


Keywords: intellectual property, litigation, restrictive covenant, Kearns, reformation clause


Michael Molzberger, Schiff Hardin, Chicago, IL



May 21, 2015

Can the "Inevitable Disclosure" Doctrine Support a Breach of Contract Action?

The trade secrets doctrine of inevitable disclosure is often used as a preemptory tool to enjoin competitive employment where it would be inevitable that a former employee would disclose trade secret information in its new position at a competitor, whether purposefully or inadvertently. See Linda K. Stevens, “Unraveling the Doctrine of Inevitable Disclosure” Intellectual Property Litigation, American Bar Association (Mar. 28, 2014). Recently, in an attempt to fight a motion to dismiss, the plaintiff in Gilead Sciences, Inc. v. Abbott Labs, Inc., attempted to invoke the doctrine of inevitable disclosure as a basis for alleging that the defendants had breached a confidentiality agreement. 2015 WL 1191129 (D. Del. Mar. 13, 2015).


In Gilead, Pharmasset (later acquired by Plaintiff Gilead) and Abbott entered into a confidentiality agreement in order to exchange confidential information regarding therapies for the treatment of hepatitis C in preparation for a potential acquisition by Abbott. Id. at *1–2. After Gilead acquired Phamasset, Abbott began filing provisional patent applications relying on a “predictive ‘mechanistic model,’” and Gilead filed suit alleging that Abbott had used Gilead’s confidential information in support of this mechanistic model. Id. When Abbot moved to dismiss for failure to state a claim, Gilead attempted to support its allegations of breach of the confidentiality agreement by invoking the doctrine of inevitable disclosure. Gilead argued that since a number of named inventors on the patent applications had access to the confidential information, it was inevitable that the information was not just used to determine whether Abbott would acquire Pharmasset. Id. at *8. The court was not persuaded to invoke this doctrine and noted that Gilead could not cite to any precedent finding that someone who was bound by a nondisclosure agreement inevitably disclosed confidential information. Id. However, the court did not dismiss Gilead’s breach of contract claim, finding instead that the facts alleged supported a plausible inference of breach under Twombly and Iqbal. Id. at *8–9.


The Gilead court was not convinced that the inevitable disclosure doctrine was an appropriate tool to support a cause of action for breach where the alleged breach had already occurred. As breach is an essential element of the breach of contract action, the court may have been wary of allowing a party to sidestep the pleading requirements. Although the inevitable disclosure doctrine was not successfully applied in Gilead, it may be more successful if used to support a cause of action for anticipatory breach or to support a request for equitable relief, such as a preliminary or permanent injunction. Beyond the motion to dismiss stage, it is also possible that the inevitable disclosure doctrine could be invoked as one factor, in combination with other facts uncovered in discovery, to convince the fact finder that there was a breach.


Keywords: intellectual property, litigation, breach of contract, disclosure, inevitable disclosure


Christine Wilson Feller, Schiff Hardin LLP, New York, NY



May 21, 2015

TTAB Determination of Likelihood of Confusion May Have Preclusive Effect

It is not every day the Supreme Court gives trademark practitioners the chance to call a case “landmark” or “game changing.” B&B Hardware, Inc. v. Hargis Industries, Inc., decided on March 24 in a 7–2 opinion by Justice Alito, has provided that opportunity, even if many may dispute those designations.


In B&B Hardware, the Court held that “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB [the Trademark Trial and Appeal Board, which hears trademark opposition and cancellation proceedings] are materially the same as those before the district court, issue preclusion should apply to the determination of likelihood of confusion” by the TTAB.


It was a long road to this decision for the parties, who have been locked in a battle in the courts and at the TTAB over their respective marks for nearly two decades and counting. After Hargis applied to register its SEALTITE mark, B&B initiated an opposition proceeding before the TTAB to block the registration based on its registered SEALTIGHT mark. B&B also filed suit for trademark infringement in district court. The TTAB ruled first, deciding that there was a likelihood of confusion between the two marks and refusing registration of Hargis’ SEALTITE mark on that basis.


Meanwhile, in the district court action, the jury found no likelihood of confusion between the marks. B&B argued that the TTAB’s finding of likelihood of confusion should preclude an alternate finding on that issue in court. The district court disagreed, and B&B appealed. The Eighth Circuit affirmed the lower court’s decision, finding, among other things, that the TTAB’s use of different factors than the Eighth Circuit to determine likelihood of confusion eliminated the possibility of issue preclusion.


The Supreme Court saw things differently than the lower courts. The Court first found that nothing in the Lanham Act—the statutory basis for the federal trademark registration process, including proceedings before the TTAB—barred the application of issue preclusion. Next, the Court found that its prior decisions allowed for the finding of a federal agency to be the basis for issue preclusion. Finally, the bulk of the Court’s opinion addressed the fact that, while there are differences between a court proceeding and a TTAB proceeding, the standards for determining likelihood of confusion in the two proceedings were effectively the same.


It would be easy—especially after a quick scan of the blog headlines and email alerts that immediately followed the ruling—to think B&B Hardware represented a profound change in trademark litigation. There is no doubt the case is significant and no doubt that the role and importance of opposition and cancellation proceedings will shift because of it, but there are important aspects of the ruling that may render issue preclusion unlikely in most situations. First, the Court was careful to make clear that issue preclusion could not be applied where the actual use of the mark—the subject of infringement analysis in district court—differs in a material way from the trademark application. Justice Ginsburg filed a very short concurrence emphasizing this very point.


Second, a party to a TTAB opposition or cancellation proceeding always has the right to de novo review of the TTAB decision, either in the Federal Circuit or a district court. Although Hargis opted not to appeal the TTAB’s determination of likelihood of confusion, such an appeal would have eliminated the preclusive effect of the TTAB decision. If nothing else, then, B&B Hardware will presumably increase the appeal rate of TTAB proceedings as parties face the threat of issue preclusion.


Keywords: intellectual property, litigation, trademark, infringement, Supreme Court, Trademark Trial and Appeal Board


Joseph Mauch, Shartsis Friese LLP, San Francisco, CA



May 11, 2015

Ninth Circuit Draws Fine Line Around Fine Art Resale Royalties

In a partial victory for artists such as Chuck Close and the Sam Francis Foundation—and for other visual artists who sold early works for rent money before establishing their name and value—the Ninth Circuit Court of Appeals last week resurrected part of a California law that enables fine artists to share in the profits from resale of their works. Whether the state law interferes with federal copyright laws remains to be seen.

The 1976 Resale Royalty Act required California art sellers or their agents to locate artists after selling their work in order to pay them 5 percent of the purchase price. The well-intentioned law ran afoul of the so-called “dormant Commerce Clause” by purporting to regulate not only sales in California, but also all sales on behalf of California domiciles, even if the sale itself occurred wholly outside of California. The Commerce Clause, contained in Article I, Section 8 of the U.S. Constitution, permits Congress to regulate interstate commerce, and by implication the dormant Commerce Clause prohibits States from regulating commerce taking place outside of its own boundaries. See, e.g., Healy v. Beer Instit., 491 U.S. 324 (1989). The Resale Royalty Act was therefore struck down in its entirety by the Central District of California. On appeal, however, the Ninth Circuit severed the offending “California domicile” portion, leaving intact the remainder of the law regulating resale taking place in California.

The decision was handed down by a divided en banc court and included concurring opinions that would have more finely limited the law’s application, essentially exempting out-of-state auction houses Christies, Sotheby’s, and eBay, which had successfully challenged the law’s constitutionality in the district court. The Ninth Circuit majority did not draw the line as fine as the concurrences, but also did not paint with as broad a brush as the district court. It agreed that, by attempting to regulate sales by California domiciles wherever they may occur, the legislature violated the Commerce Clause. Where the district court struck down the entire Act, however, the Ninth Circuit found it permissible and appropriate merely to sever the portion applying to California domiciles.

This effectively lets the auction houses off the hook for non-California sales. The interesting question remains: Does the Resale Royalty Act impermissibly interfere with the Copyright Act, which pre-empts any state incursion into copyright laws? California auction houses still affected by the law can argue that the law encroaches upon the first-sale doctrine, which generally permits the rightful owner of a copyrighted work to resell the original freely. The defendants in the current case made a copyright pre-emption argument in the district court, but it has not yet been considered. If any portion of the case survives, this key question may be considered on remand.

The Ninth Circuit’s editing of California’s statute, together with the copyright pre-emption issue, begs the question of whether Congress should act. As U.S. Register of Copyrights Maria A. Pallante recently opined to Congress, visual artists do not benefit from late-career fame the way, say, film or music artists might, as fine art is valued more for its scarcity than for its reproducibility. See The Register’s Perspective on Copyright Review Before the H. Comm. on the Judiciary, 114th Cong. 18–19 (2015). Therefore, the Copyright Act does not protect visual artists, who spend enormous effort to produce singular works, in the same way that it protects authors and musicians. A limited federal resale royalties law could correct this disparity. One reason Congress has not acted is the complexity of administrative and enforcement costs. If California’s experiment is instructive, such complexities have indeed presented barriers to effective enforcement. But unlike California, a federal law could put the onus on the big auction houses and avoid the biggest enforcement problems, which, coupled with modern information technology, could make national resale royalties a reality for those once-starving artists.

The case is Sam Francis Foundation et al. v. Christies, Inc., et al. (9th Cir. May 5, 2015).


Keywords: intellectual property, litigation, royalties, fine art, Commerce Clause, Resale Royalty Act


Dennis O. Cohen, BakerHostetler, New York, NY



May 8, 2015

Revelers, Rejoice: Haydel's "Mardi Gras Bead Dog" Unprotectable

Is nothing about New Orleans Mardi Gras sacred? According to the Fifth Circuit's decision in Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., concerning the New Orleans tradition of the Mardi Gras bead dog, the answer is "No!"


What's a bead dog? As the Fifth Circuit recounted, during Mardi Gras, parade krewes throw beads to paradegoers. For generations, New Orleanians have taken broken Mardi Gras beads and twisted them into a "bead dog" (much like a balloon animal).


In 2008, Haydel's Bakery—baker of the delectable Cajun Kringle®—commissioned an artist to design a giant bead dog that it placed outside of the bakery. Haydel's named it "Mardi Gras Bead Dog." In 2009, the USPTO issued two trademarks to Haydel's—the word mark "MARDI GRAS BEAD DOG" and a design mark for its shape. In September 2012, Haydel's registered a copyright in the design and sold Mardi Gras Bead Dog items, such as miniature plastic sculptures and jewelry. The bakery also licensed the design to the New Orleans SPCA, which then auctioned off giant customized bead dogs for its Paws On Parade fundraiser (think, Chicago's Cows on Parade).


In May 2012, Nola Spice Designs began selling bead dog jewelry made by twisting beads and wires following the traditional method. In October 2012, Haydel's demanded Nola Spice cease and desist sales, claiming that its jewelry infringed Haydel's copyright and trademarks. Rather than cease and desist its bead twisting, Nola Spice sued Haydel's in the Eastern District of Louisiana seeking (1) a declaratory judgment of non-infringement; (2) cancellation of Haydel's marks; and (3) damages under Louisiana's unfair trade practices law. Haydel's counterclaimed for not only trademark infringement, but also trademark dilution, unfair competition, and copyright infringement.




Haydel’s Mardi Gras Bead Dog

Nola Spice’s Bead Dog jewelry


On cross motions for summary judgment, the district court held that Haydel's trademarks for "MARDI GRAS BEAD DOG" and the bead dog design were, at most, descriptive and ordered cancellation. The district court also dismissed the copyright infringement claim.


Affirming the district court in a 38-page opinion, the Fifth Circuit recognized that a traditional bead dog can only be made from Mardi Gras beads and thus, "MARDI GRAS BEAD DOG" is descriptive. As for the design mark, the Fifth Circuit applied the Seabrook Foods test and concluded that because of the similarity between traditional bead dogs and Haydel's design mark, no reasonable juror could find Haydel's design was distinctive. And since Haydel's could not establish secondary meaning for its marks (personally, I associate the bead dog design with New Orleans SPCA, not Haydel's), the Fifth Circuit found that Haydel's had no protectable trademarks and affirmed cancelation.


Shockingly, the Fifth Circuit also sustained dismissal of Haydel's copyright infringement claim. The Fifth Circuit dissected Haydel's bead dog design, opining that it consisted primarily of unprotectable design elements that mimicked a traditional bead dog. It noted that the beaded collar on Haydel's design possibly could be copyrighted, but that the collar's "minimal originality counsels against a finding of substantial similarity" with the NOLA Spice design.


Keywords: intellectual property, litigation, NOLA, New Orleans, Mardi Gras, bead dog, Mardi Gras Bead Dog, copyright, trademark, infringement


Lesli D. Harris, Stone Pigman, New Orleans, LA



April 30, 2015

En Banc Constitutionality of Trademark Act's Ban Against Registration of Disparaging Marks to Be Reviewed

The Slants are a Portland-based band comprising musicians of Asian-American descent who characterize their genre as “Chinatown Dance Rock.” The band’s bassist Simon Tam filed a trademark application for THE SLANTS for “Entertainment, namely, live performances by a musical band.” The examining attorney refused registration on the basis that the mark “The Slants” is disparaging to Asian Americans, pursuant to 15 U.S.C. §1052(a) (Section 2(a) of the Trademark Act). Looking both to dictionary definitions and evidence of the band’s own use of the mark, including the applicant’s contention that the band’s adoption of the name The Slants was “a way to reclaim a racial slur and to assert Asian pride,” the examiner found that “the evidence is overwhelming that applicant chose the mark fully aware of the connection to the racial slur.” The Trademark Trial and Appeal Board affirmed the refusal in April 2013.


On appeal to the U.S. Court of Appeals for the Federal Circuit, Tam contended that the board erred in finding the mark THE SLANTS disparaging and also challenged the constitutionality of Section 2(a).


Section 2(a) permits refusal of registration of a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” A two-part test determines whether a mark may be disparaging: (1) determining the likely meaning of the matter in question, taking into account both dictionary definitions and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) whether the meaning may be disparaging to a substantial composite of the referenced group.


As to the first prong, the Federal Circuit agreed with the board’s determination that the evidence before it indicated that the mark THE SLANTS “likely refers to people of Asian descent,” based both on statements made by Tam and the fact that the band’s website featured the mark THE SLANTS “against a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image.” The Federal Circuit also cited the fact that Mr. Tam’s invitation to address the 2009 Asian American Youth Leadership Conference in Portland had been rescinded due to concern that the name THE SLANTS was offensive and racist as supporting the board’s determination. The court also found that substantial evidence supported the board’s determination as to the second prong, that THE SLANTS is likely offensive to a substantial composite of people of Asian descent.


Turning to the constitutionality of Section 2(a), the Federal Circuit’s opinion first observed that the First Amendment is not implicated by a refusal to register a mark, since an applicant may use a mark regardless of whether the USPTO registers it, per In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). The court also rejected Tam’s due process argument based on the USPTO’s registration of other arguably disparaging marks as well as other marks containing “slant” or “slants,” noting that Tam had a full and fair opportunity to prosecute his application and appeal the examining attorney’s refusal to the board. Finally, the court was not persuaded by Tam’s equal protection argument, which asserted that the rejection was based on his and his bandmates’ identities as persons of Asian descent. The court distinguished the rejection as being based on the manner of the band’s use, rather than the identities of the band members themselves. Because there were nondiscriminatory reasons for denying the application, the court determined that the refusal could be affirmed.


Although the Federal Circuit’s opinion was written by Judge Kimberly Moore for a unanimous panel, Judge Moore also contributed an additional twenty-three pages of “additional views” calling for the en bancFederal Circuit to “revisit McGinley’s holding on the constitutionality of § 2(a) of the Lanham Act.” Judge Moore noted that the applicant’s stated purpose of “reclaiming” and “taking ownership of” the racial slur falls within “the heartland of speech protected by the First Amendment.” Furthermore, notwithstanding McGinley’s rule that refusal to register does not implicate use, Judge Moore observed that registration “is significant” and confers important legal rights and benefits on trademark owners who register their marks.


The Federal Circuit heeded Judge Moore’s call for en banc review of the panel’s decision in In re Tam just a week after the panel’s opinion issued, indicating a strong possibility that the full court will find Section 2(a) unconstitutional. Judge Moore’s “additional views” provide a roadmap for the full court to do so.


Keywords: intellectual property, litigation, racial slur, The Slants, trademark, Trademark Trial and Appeal Board, discrimination


Lesley McCall Grossberg, BakerHostetler, Philadelphia, PA



April 3, 2015

Jury Sees a Clear Line—Pharrell and Thicke Crossed It

Pharrell Williams, famous for singing about how “Happy” he is, might be changing his tune these days. On March 10, a federal jury found him and fellow pop star Robin Thicke liable for copying Marvin Gaye’s popular song “Got to Give it Up,” resulting in one of the biggest music-infringement verdicts ever—$7.3 million.


Pharrell, known for composing an impressive list of pop hits, scored his biggest hit when he and Robin Thicke teamed up to compose and record “Blurred Lines,” which topped the music charts for months in 2013. Thicke repeatedly said that Gaye’s “Got to Give it Up” was an “inspiration” when they were composing the 2013 hit. While “Blurred Lines” enjoyed immense success, Marvin Gaye’s family members, who own the copyright to “Got to Give it Up,” complained that the two songs were a bit too similar. As a result, Pharrell, Thicke, and other “Blurred Lines” rights holders filed a declaratory action in the Central District of California asking the court to rule that their hit did not infringe, as was previously discussed here and here. The Gaye family counterclaimed for infringement.


Things seemed to be going well for Pharrell and Thicke. In the district court’s summary judgment opinion, the court ruled that the Gaye family owned rights only to the song’s underlying musical composition. The copyright to the sound recording (i.e., Gaye’s recorded performance) is owned by Universal Music Group (it originally was owned by Motown), who did not assert a claim. Accordingly, in a pre-trial ruling, the court excluded the well-known “Got to Give it Up” sound recording as evidence, preventing a jury from hearing a comparison of the two songs as recorded. This was deemed a big “win” for Pharrell and Thicke because the sheet music did not contain any instrumental parts—including the keyboard, bass, and cowbell parts—which were arguably the elements most similar to those in the “Blurred Lines” recording. Even the Gaye family’s expert declared that “[t]o limit the composition of ‘Got to Give it Up’ to its [sheet music] is musically misleading.”


At trial, the parties presented clashing expert testimony comparing and contrasting the compositions. Pharrell and Thicke asserted that “Blurred Lines” and “Got to Give it Up” are not substantially similar and chose not assert a “fair use” defense. They also argued that any similarities between the songs resulted from elements common to pop songs in general. Robin Thicke crooned several songs on the stand to demonstrate this point, including songs by the Beatles and Michael Jackson. He also tried to backtrack on his claims about Gaye’s specific influence, testifying he was too drunk and high while recording the song. But the contradictory evidence and reliance on “star power” failed to win over the jury.


Even though they could not use the original “Got to Give it Up” sound recording, the Gaye family’s experts convinced the jury there were enough similarities to find infringement. The Gaye’s family experts also created MIDI files so that the jury could hear these similarities. The jury found both Pharrell and Thicke liable, ordering them to pay about $7.3 million in actual damages and profits.


Many commentators criticize the fact that the jury was not able to analyze the “Got to Give it Up” sound recording. But the ruling was appropriate since the recording contained elements outside the scope of the Gaye family’s copyright. Yet, given the verdict, it is worth asking whether Pharrell and Thicke made a strategic misstep by making the request. As a result, the jury was limited to the abstract expert testimony from musicologists and a stripped-down MIDI version of Gaye’s song.


In the Ninth Circuit, to find substantial similarity, the jury must find both objective and intrinsic similarity. Often—as here—parties will employ musicologists as experts to testify to objective similarities and differences in the works. Musicologists expound on things like structures, harmonic patterns and rhythms, and melodies. On the other hand, the jury must also find the songs intrinsically similar. This analysis is less obtuse and allows jurors to reflect on their subjective impressions.


It appears that by excluding the sound recording, Pharrell and Thicke inadvertently limited the jury’s ability to distinguish the songs’ intrinsic differences. One of their primary arguments was that the songs’ similarities are attributable to their shared “groove”—which, they argued, does not constitute infringement. Some have speculated that the “Got to Give it Up” stripped down MIDI file could not adequately capture the “groove” and instead highlighted the objective similarities between the songs.


The litigation remains active. On April 2, the court established a post-trial briefing schedule. The Gaye family is seeking to enjoin further sales of “Blurred Lines” and to have the verdict extend to Interscope Records and rapper Clifford Harris, Jr., a.k.a. T.I. Meanwhile, Pharrell and Thicke will seek to have the verdict overturned and/or a new trial. Briefing for both parties’ motions will begin May 1 and conclude in late June. Regardless of how the court rules on these post-trial motions, an appeal seems inevitable. As the Pharrell plaintiffs warned, “This case is far from over.”


Keywords: intellectual property, litigation, Pharrell Williams, Blurred Lines, Marvin Gaye, Robin Thicke, copyright infringement


Andrew Alexander, BakerHostetler, Cleveland, OH



March 30, 2015

Is there Reasonable Certainty about the Standard of Review for Indefiniteness?

The statutory presumption of validity requires proof that patents are invalid by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2246, 2252 (2011). The federal circuit’s now-defunct “insolubly ambiguous” test incorporated this presumption into the indefiniteness analysis. See Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338-39 (Fed. Cir. 2003) (“Because a claim is presumed valid, a claim is indefinite only if the claim is insolubly ambiguous, and no narrowing construction can properly be adopted.” (citations and internal quotation marks omitted)). The court reasoned such a test was particularly apt for indefiniteness because of the latter’s roots in claim construction. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010) (“[B]ecause claim construction frequently poses difficult questions over which reasonable minds may disagree, proof of indefiniteness must meet an exacting standard.” (citations and internal quotation marks omitted)).


In Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the Supreme Court rejected the “insolubly ambiguous” test and replaced it with the “reasonable certainty” test. Id. at 2129. The Court dismissed concerns that eliminating the “insolubly ambiguous” test would also eliminate the presumption of validity in indefiniteness analyses. See id. at 2130 n.10 (“[The] presumption of validity does not alter the degree of clarity that § 112[(b)] demands from patent applicants; to the contrary, it incorporates that definiteness requirement by reference.” (citation omitted)).


The federal circuit’s application of the “reasonable certainty” test in recent cases lends credence to those concerns. In three of the federal circuit’s four precedential post-Nautilus indefiniteness decisions, the court departs from its pre-Nautilus analysis, which framed the indefiniteness analysis with the presumption. Compare Eidos Display, LLC v. AU Optronics Corp., No. 2014-1254, 2015 WL 1035284, at *4 (Fed. Cir. 2015); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371–73 (Fed. Cir. 2014) with Honeywell, 341 F.3d at 1338–39. Instead, the court construes the disputed terms without expressly acknowledging that the claims are presumed to be valid and thus should be presumed to have some meaning absent clear and convincing evidence to the contrary.


For example, in Interval Licensing, the federal circuit found that the term “unobtrusive manner” was “highly subjective,” i.e., based on “any one person’s opinion,” because “the claim language offer[ed] no objective indication of the manner in which content images are to be displayed to the user.” 766 F.3d at 1371. After reviewing the intrinsic evidence, the court concluded the evidence failed to “provide a reasonably clear and exclusive definition” for “unobtrusive manner,” thus “leaving the facially subjective claim language without an objective boundary.” Id. at 1373. The court declared the term indefinite without referencing the presumption of validity or the clear-and-convincing standard. Compare id. with Haemonetics, 607 F.3d at 783 (“An accused infringer must thus demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the [intrinsic evidence].” (emphasis added)).


DDR Holdings and Eidos similarly fail to express the presumption of validity in their analyses. See Eidos, 2015 WL 1035284, at *4; DDR Holdings, 773 F.3d at 1260. The omission is particularly noteworthy in DDR Holdings, which specifically references the clear-and-convincing evidentiary standard for anticipation, 773 F.3d at 1252 (“Invalidity by anticipation must be proven by clear and convincing evidence.” (emphasis added)), but makes no parallel statement for indefiniteness.


By contrast, Warsaw Orthopedic, Inc. v. NuVasive, Inc., Nos. 2013-1576, 2013-1577, 2015 WL 859503 (Fed. Cir. 2015), relied on the clear and convincing evidence standard to find no indefiniteness. The claim at issue recited the dimensions of a translateral spinal implant in relation to the width, depth, and separation of vertebrae. Id. at *3. Although the claim had a “relative nature,” the parties had stipulated that “[t]he average dimensions of the human vertebrae are well-known….” Id. The court held that “NuVasive failed to establish, by clear and convincing evidence, that human anatomy varies so significantly that reliance on the well-known dimensions of human vertebrae makes the claims indefinite.” Id.


Some of the federal circuit’s post-Nautilus indefiniteness decisions bring into question at least the practical relevance of the presumption of validity in the indefiniteness analysis. We suspect this issue will gain more attention as the federal circuit decides more indefiniteness cases.


Keywords: intellectual property, litigation, reasonable certainty, indefiniteness, Nautilus


Jeanne M. Heffernan and Leslie M. Schmidt, Kirkland & Ellis LLP, New York, NY



February 27, 2015

New Jersey Legislators Seek to Expand Data Breach Notification

New Jersey legislators advanced a bill to expand notification requirements in the event of a data breach affecting New Jersey residents. The bill, Assembly No. 3146, passed on December 15, 2014, by a vote of 75–0 and was referred to the Senate Commerce Committee where it has not yet been addressed. The Assembly bill seeks to expand the definition of “personal information” under N.J.S.A. § 56:8-163. (N.J. Data Security Law). (A similar bill, S2188, was introduced in the New Jersey Senate.)


The N.J. Data Security Law requires companies that conduct business in New Jersey to notify New Jersey residents whose personal information has been, or is reasonably believed to have been, accessed by an unauthorized party. “Personal information” is defined as:


[a]n individual’s first name or first initial and last name linked with any one or more of the following data elements: (1) Social Security number; (2) driver's license number or State identification card number; or (3) account number or credit or debit card number, in combination with any required security code, access code, or password that would permit access to an individual's financial account.


Dissociated data that, if linked, would constitute personal information is personal information if the means to link the dissociated data were accessed in connection with access to the dissociated data.


N.J.S.A. § 56:8-161.


The Assembly bill addresses the apparent growth in consumer use of the internet in that, if passed, it will expand the definition to include a “(4) user name email address, or any other account holder identifying information, in combination with any password or security question and answer that would permit access to an online account.” See Assembly Bill No. 3146, State of New Jersey (216th Legislature).


The bill does not amend or change the requirement that prior to notifying any customers of a data breach, a New Jersey business must first notify the Division of State Police in the Department of Law and Public Safety for its own investigation or handling. N.J.S.A. § 56:8-163.


Keywords: intellectual property, litigation, Data Breach, Security Breach, New Jersey, Privacy


Nancy A. Del Pizzo, Podvey, Meanor, Catenacci, Hildner, Cocoziello & Chattman, P.C., Newark, NJ and New York, NY



February 27, 2015

Executive Order re: Cybersecurity

On February 13, 2015, at the Summit on Cybersecurity and Consumer Protection at Stanford University, President Obama issued an Executive Order titled “Promoting Private Sector Cybersecurity Information Sharing.” The central provision of the order contemplates ways to increase voluntary disclosure and real-time sharing of cybersecurity threat information among private sector companies, non-profits, and federal agencies. In that vein, the order suggests a framework for the Department of Homeland Security to encourage the formation of Information Sharing and Analysis Organizations (ISAOs).


These ISAOs would be groups organized on the basis of sector, regions or other affinity, including in response to a particular threat or vulnerability, which would collaborate with the Department of Homeland Security to share information about cybersecurity threats. In addition, the order gives the Department of Homeland Security authority to enter into information-sharing agreements with ISAOs and directs it to create a non-profit organization to develop baseline standards and practices for information sharing. Participation in ISAOs will be voluntary and whether private industry will join remains unclear.


Crucially, the order does not substantively address the liability risks that may accompany cybersecurity attacks, including consumer class actions and shareholder lawsuits, threats that may undermine the willingness of some companies to readily share details regarding a hacking incident. Instead, the order calls for legislative action by Congress to enact targeted liability protection for companies that participate in ISAOs and share information. Indeed, only two days prior to the order, Senator Tom Carper of Delaware introduced a separate bill entitled “Cyber Threat Sharing Act of 2015” which proposes limitations of liability in certain instances for sharing by ISAOs. The bill is presently pending in committee.


Keywords: intellectual property, litigation, cybersecurity, Summit on Cybersecurity and Consumer Protection, Executive Order, information sharing, ISAOs, Department of Homeland Security


Megan Donohue, Cooley LLP, San Diego, CA



February 17, 2015

Ruling on an Appeal from an Inter Partes Review

The Federal Circuit last week issued its first ruling, In re Cuozzo Speed Technologies, on an appeal from an inter partes review (IPR) final written decision. In doing so, the court affirmed the USPTO’s Patent Trial and Appeal Board (PTAB) on two critical issues, offering further clarity for Patent Office litigants.

First, the court held that it lacks jurisdiction to review PTAB decisions to institute IPR, even after the PTAB has issued a final written decision. Previously, the court had held in St. Jude Medical v. Volcano Corp. that it could not entertain appeals of decisions not to institute review. Now, In re Cuozzo puts a final nail in the coffin for those who would appeal from an allegedly wrongful decision whether to institute IPR, finding that the AIA bars both interlocutory review of an institution decision, as well as review of that decision even after a final decision. The In re Cuozzo ruling did leave unresolved the question of whether a decision to institute IPR may be reviewable by mandamus after the PTAB issues a final decision, though it noted its prior decision that mandamus is unavailable for decisions not to institute IPR. Even if mandamus is ultimately determined to be a viable option after a final written decision, though, a mandamus petition may still prove to be a fool’s errand given the lofty standard for such writs to issue. Indeed, the court reaffirmed that only “rare situations” ever justified mandamus. In short, In re Cuozzo further insulates IPR-institution decisions from judicial review.

Second, the court affirmed the PTAB’s use of the “broadest reasonable interpretation” standard in construing claims in IPRs. The court cited the Patent Office’s long history of applying this standard in its proceedings and found that “[t]here is no indication that the [America Invents Act] was designed to change the claim construction standard that the PTO has applied for more than 100 years.” The court also noted that patent owners are permitted to amend claims in an IPR proceeding, and thus its decision was consistent with longstanding judicial precedent affirming the “broadest reasonable interpretation” standard in proceedings where claim amendment is permitted. In dissent, Judge Newman agreed with appellants that the PTAB should adopt the standard used in district courts: that claims should be construed as understood by the person of ordinary skill in the art, as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). That view, however, has now been firmly squelched, unless and until the Supreme Court—or en banc Federal Circuit—weighs in on the issue.

Keywords: litigation, intellectual property, inter partes, patent, PTAB, Cuozzo


Kevin Bovard, BakerHostetler, Philadelphia



January 29, 2015

Supreme Court Announces New Standard for Review of Claim Construction Rulings

On January 20, 2015, the Supreme Court rejected the federal circuit’s long standing practice of applying a de novo standard to all aspects of its review of claim construction rulings. In its much anticipated decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the seven-justice majority ruled that when reviewing a district court’s determination of subsidiary factual issues in the course of claim construction the federal circuit must apply a “clear error” standard. Legal determinations made in the course of claim construction, however, remain subject to de novo review.


The patent at issue claimed a drug active ingredient with a molecular weight in a certain range, but it did not specify how the molecular weight should be calculated. Because there are three different methods of calculating molecular weight that could apply and result in different values, defendant argued that the claim is fatally indefinite. When the district court construed this claim, it heard conflicting testimony from experts, ultimately crediting the patent owner’s expert and finding that a person of ordinary skill in the art would understand the term “molecular weight” to refer to molecular weight calculated by one particular method. Based on this claim construction, the district court ruled that the claim was not indefinite.


On appeal, the federal circuit had reversed, finding that the term “molecular weight” was indefinite. In reaching this conclusion, the federal circuit reviewed all aspects of the district court’s claim construction de novo. The Supreme Court granted certiorari in order to clarify the standard that the federal circuit should use to review claim construction rulings.


The Court began its analysis with the requirement of Fed. Rule Civ. Proc. 52(a)(6) that facts found by the trial judge should not be set aside “unless clearly erroneous” and saw no reason to depart from this standard when reviewing subsidiary factual determinations made in the course of claim construction. The Court specifically dismissed the notion that its opinion in Markman v. Westview Instruments, Inc., required a different result, stating that “when we held in Markman that the ultimate question of claim construction is for the judge and not the jury, we did not create an exception from the ordinary rule governing appellate review of factual matters.”


This ruling does not mean, however, that claim construction decisions are now to be reviewed entirely under a clear error standard. To the contrary, the Court specifically noted that when a district court reviews only intrinsic evidence (i.e., the patent claims, specification, and prosecution history), its claim construction decision will amount solely to a ruling of law and will therefore be subject to de novo review. In cases where the district court needs to review extrinsic evidence to resolve factual disputes, such as the background science or the meaning of a relevant term of art, those determinations must be reviewed under the clear error standard, but the court’s ultimate interpretation of the claim in light of the facts as found remains a conclusion of law subject to de novo review.


According to the dissent, the majority rule merely pushes the dispute to “the vexing distinction between questions of fact and questions of law,” and the dissent predicts that this rule will spawn costly and largely meritless collateral litigation over that distinction. Relying on its view that the construction of patent claims is more like the construction of a statute than a contract or deed, the dissent would apply the de novo standard that applies to subsidiary determinations made during statutory construction.


This decision will no doubt result in more deference to some trial court claim construction rulings, but it will not necessarily apply to or be meaningful in every case. As the dissent emphasizes, the impact of the ruling will depend on whether the determination at issue is seen as a determination of fact or law. It remains to be seen whether this new formulation of the standard of review for claim construction rulings will result in a more appropriate division of labor between the federal circuit and the district courts, or merely create a new cottage industry in arguments over whether disputed rulings should be considered rulings of fact or law.

Keywords: litigation, intellectual property, de novo, Teva Pharmaceuticals, patent


Michael P. Padden, Pearne & Gordon LLP, Chicago, IL



January 28, 2015

Does Raging Bull Deliver Knockout to Patent Laches Defense?

Under federal circuit case law, patent-infringement defendants may assert the laches defense—an equitable defense barring claims brought after an unreasonable delay. But the doctrine will soon square off in the federal circuit against a heavy hitter: Raging Bull.

In 2014, the Supreme Court decided a copyright case about the popular boxing movie Raging Bull. There, the Court struck laches as an available copyright-infringement defense. Now, the stage is set for the full federal circuit to revisit the laches doctrine in the patent arena.

In December, the federal circuit voted to rehear, en banc, its panel decision in SCA Hygiene Products v. First Quality Baby Products, LLC, 767 F.3d 1339 (Fed. Cir. 2014). In SCA, the panel affirmed the dismissal of SCA’s patent-infringement claim based on laches. In affirming dismissal, the panel relied on its prior precedent, A.C. Aukerman Co. v. R.L. Chaides Constr., 960 F.2d 1020 (Fed. Cir. 1992). In Aukerman, the federal circuit held that laches is available to patent-infringement defendants.But now, the Aukerman reasoning is in doubt after the Supreme Court’s recent Raging Bull decision—a.k.a. Petrella v. MGM, Inc., 134 S.Ct. 1962 (2014).


In Petrella, the Supreme Court held that the Copyright Act’s three-year statute of limitations supplants the need for the laches defense. Accordingly, laches is unavailable to copyright-infringement defendants. The en banc federal circuit will now decide whether the Petrella reasoning translates to patent law when it rehears SCA.

The issue is that the patent statute, like the Copyright Act, includes a time limitation on damages:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

35 U.S.C. § 286.

In Aukerman, the federal circuit held that this patent damage limitation could coexist with the laches doctrine. But after Petrella, it’s not so clear. The Supreme Court’s reasoning in Petrella appears to clash with the Aukerman opinion on several key issues. And the en banc SCA rehearing sets the stage for the federal circuit to address those issues.

First, the court might determine whether § 286 is, in fact, a “statute of limitations.” The Aukerman court held that it was not a statute of limitations. Rather, it explained that § 286 is an “arbitrary limitation on the period for which damages may be awarded,” and “[l]aches, on the other hand, invokes the discretionary power of the district court to limit the defendant’s liability for infringement by reason of the equities between the particular parties.” Aukerman, 960 F.2d at 1030. Thus, the court implied that § 286 could coexist with the laches defense since they serve different purposes.

Yet, the Supreme Court might disagree. In describing the Copyright Act’s statute of limitations in Petrella, it stated that “[n]o recovery may be had for infringement in earlier years.” Petrella, 134 S.Ct. at 1973. This language is notably similar to that of § 286, which the Aukerman court declined to call a statute of limitations, that “no recovery shall be had for any infringement committed more than six years prior . . . .” 35 U.S.C. § 286.In short, the Supreme Court may have foreseen the conflict and tipped its hand.

Second, if § 286 is a statute of limitations, the court will likely address whether laches can apply within that limitations period. In Aukerman, the federal circuit held that “[i]n other areas of our jurisdiction, laches is routinely applied within the prescribed statute of limitations period for bringing the claim.” Aukerman, 960 F.2d at 1030. Yet, in Petrella, the Supreme Court held that “we have never applied laches . . . within a federally prescribed limitations period.” Petrella, 134 S.Ct. at 1974.

Finally, the court will likely address whether laches—an equitable doctrine—is an appropriate defense against patent infringement—a legal claim. In Aukerman, the federal circuit held that the equitable defense could be asserted against a claim for patent infringement. It reasoned, “the equitable defense of laches in a civil action is specifically recognized in Fed. R. Civ. P. 8(c).” Aukerman, 960 F.2d at 1031.

However, in Petrella, the Supreme Court specifically rebuked this argument when made by MGM, explaining that “[t]he expansive role for laches MGM envisions careens away from understandings, past and present, of the essentially gap-filling, not legislation-overriding, office of laches.” Petrella, 134 S.Ct. at 1974.

Briefing for the en banc hearing is still underway, with SCA’s appellant brief due February 27, 2015.

Keywords: litigation, intellectual property, Petrella, Aukerman, Raging Bull, patent infringement, laches


Andrew Alexander, BakerHostetler, Cleveland, OH



January 26, 2015

Trademark "Tacking" Questions Should Go to a Jury

The Supreme Court issued its first substantive trademark decision of the current term yesterday in Hana Financial, Inc. v. Hana Bank. The district court had charged the jury with determining whether Hana Bank’s original mark, HANA OVERSEAS KOREAN CLUB, had the same commercial impression as its revised mark, HANA BANK. The jury found that it did, and the Ninth Circuit affirmed the district court’s decision to have the jury determine the question.


The Supreme Court affirmed, in a unanimous opinion authored by Justice Sotomayor, who wrote, “Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury.” The decision overrules precedent in the Sixth and Federal Circuits that had treated tacking as a question of law. Hana Financial’s four arguments, and their disposition by the Supreme Court, were as follows:

  1. 1. The “legal equivalents” test involves the application of a legal standard. Juries are capable of resolving mixed questions of law and fact. The solution is to carefully craft jury instructions on the issue, and here, the district court had charged the jury with Hana Financial’s proposed instruction on tacking.

  2. 2. Tacking determinations “will create new law,” which is a task that should be reserved for judges. Tacking determinations will not “create new law” any more than jury verdicts in other types of cases.

  3. 3. Jury determinations are unpredictable, to the detriment of the functioning of the trademark system. Again, the same could be said of tort, contract, and criminal cases in which juries “answer often-dispositive factual questions or make dispositive applications of legal standards to facts.”

  4. 4. Historically, judges have resolved tacking disputes. Hana Financial had cited to cases involving bench trials and summary judgment decisions in making this argument. Just because the tacking question may be resolved by a judge on summary judgment or following a bench trial, doesn’t mean it must, particularly when a jury has been empaneled.

Keywords: litigation, intellectual property, SCOTUS, Hana, Hana Financial, Hana Bank, Sotomayor


Lesley McCall Grossberg, BakerHostetler, Philadelphia, PA



December 19, 2014

High Times Publisher is Motivated to Litigate

Trans-High Corp. is harshing everyone's buzz. In the past year, the publisher of the marijuana-related magazine, High Times, has filed at least five trademark infringement lawsuits in federal district courts ranging from Washington to Texas. According to the lawsuits, High Times magazine was first published in 1974 and reports on the "hemp counterculture"—specifically medical and recreational use of marijuana and the reformation of drug laws. High Times also sponsors very popular marijuana festivals called the "Cannabis Cup" and "Medical Cannabis Cup," both of which culminate in an award for the best marijuana producer of the year. Trans-High first registered the HIGH TIMES mark in 2000 and now owns registrations in a variety of classes, including magazines, apparel, live comedy shows, and movie production. It registered CANNABIS CUB in 1999 in an equally broad variety of classes.

Despite being a longstanding advocate for relaxation of state and federal drug laws, Trans-High has taken a hard line on enforcement of its federal trademark rights. For example, in August 2014, Trans-High issued a series of cease and desist letters to Richard Reimers, the owner of a Washington State marijuana dispensary initially named "High Times Station." Reimers agreed to change the dispensary's name and did so, renaming it "Cannarail." Despite the shop's name change, Trans-High filed a trademark infringement action in the Eastern District of Washington, seeking a permanent injunction against Reimers.

Reimers responded with a trademark cancellation counterclaim. In a pleading filed in October 2014, Reimers argued that the Lanham Act only permits registration of marks that have "lawful use in commerce." He further argued that the federal Controlled Substance Act (CSA) prohibits the advertisement of marijuana and marijuana-related paraphernalia. Because High Times magazine and online magazine promotes marijuana use and publishes third-party advertisements for marijuana related-products, he contends that its use of the HIGH TIMES mark violates the CSA and should be cancelled.

In response, Trans-High argued that the CSA does not prohibit the advertisement of goods that are not directly tied to an "actual transaction." Because High Times magazine merely publishes third party advertisements, it contends that no "actual transaction" occurs. Trans-High also argued that the "unlawful use" argument for trademark cancellation is narrow and has only been applied in very limited circumstances. The district court has not yet ruled on Trans-High's motion to dismiss the cancellation counterclaim.

Undeterred by the cancellation argument in the Reimer's litigation, Trans-High filed an infringement lawsuit on November 19, 2014, in the Eastern District of Texas against the owner of two marijuana accessory shops named "High Times Lifestyle" and "High Times Smokeshop" and a website that incorporated the phrase "High Times" in the URL. Trans-High asserts claims under the Lanham Act, cyberpiracy under the ACPA and state unfair competition. In an answer filed in mid-December, the owner of the smokeshop denied all allegations, but did admit to responding to a cease and desist telephone call with, "I defy you to sue me!"

For an industry that offers a mellow product, such contentious litigation seems… well, uncool.

Keywords: litigation, intellectual property, trademark infringement


Lesli D. Harris, Stone Pigman, New Orleans, LA



December 18, 2014

Trademark Trends at SCOTUS

The Supreme Court heard oral argument in trademark cases on consecutive days this month. On December 2, 2014, the issue of whether a finding by the Trademark Trial and Appeal Board (TTAB) of likelihood of confusion precludes the issue from being re-litigated in a trademark infringement action was presented in B&B Hardware, Inc. v. Hargis Industries, Inc. The following day, the justices turned to the issue of whether trademark tacking is a question of law or fact in Hana Financial, Inc. v. Hana Bank.

B&B Hardware is the culmination of a sixteen-year dispute between B&B’s SEALTIGHT mark for leak-proof screws and bolts, and Hargis’s SEALTITE mark for construction screws. The TTAB found a likelihood of confusion between Hargis’s SEALTITE and B&B’s senior SEALTIGHT mark, and denied Hargis’s application to register SEALTITE on that basis. In a later trademark infringement litigation, Hargis won a jury verdict of noninfringement, and B&B appealed on the basis that the TTAB’s finding of likelihood of confusion should have been issue-preclusive. The Eighth Circuit affirmed that the district court did not err in declining to defer to the TTAB determination and excluding the TTAB opinion from trial.

At oral argument, Justice Ginsburg suggested to B&B’s counsel that issue preclusion should not apply, because the stakes are so different in a TTAB opposition proceeding as compared to a full district court litigation. B&B’s counsel demurred, but both Justice Ginsburg and Justice Kagan took issue with his representation that a TTAB opposition proceeding is “just like a civil proceeding.” The difference in the stakes of the proceeding, both in terms of cost and scope of discovery, were emphasized by Hargis’s counsel, as was the contention that in Board proceedings, likelihood of confusion is determined independent of actual usage—unlike evidence presented at the district court. Chief Justice Roberts, however, observed that “the issues are not always different,” and in such cases, B&B “could prevail on . . . the basic preclusion rule.”

It is difficult to predict what the outcome of this case will be from the argument alone; however, it will be interesting to see whether the Justices upend the current rule that TTAB proceedings are not preclusive as to the likelihood of confusion question, insofar as doing so would likely have implications for other TTAB determinations as well.

Hana Financial involves the “tacking” doctrine, which allows a mark holder to make small changes to its mark over time (such as to modernize the mark) while maintaining the right to claim the original first date of use in commerce for priority purposes. Tacking is permitted so long as the revised mark creates the same “commercial impression” to consumers as the original mark. The issue presented in Hana Financial is whether this determination should be made by a judge or a jury. The question was put to a jury in the district court, which found that Hana Bank’s original mark, HANA OVERSEAS KOREAN CLUB, had the same commercial impression as the revised mark, HANA BANK, which resulted in a priority date earlier than Hana Financial’s mark, HANA FINANCIAL.

The Ninth Circuit affirmed the jury’s verdict, but noted the existence of a circuit split, with the Sixth and Federal Circuits having held that tacking is a question of law for a judge to decide. The TTAB also considers tacking a question of law. INTA observed in its amicus brief in support of Hana Bank that the circuits holding tacking to be a question of law “have done so principally because the circuit in which the given court is situated holds the ultimate determination of likelihood of confusion in trademark infringement cases to be a matter of law.”

At oral argument, according to one commentator, “the justices seemed inclined to find that tacking should be considered a question of fact.” It thus seems likely that this case will create a bright-line rule that the question of whether two versions of a mark create the same “commercial impression” should be posed to a jury—consumers—instead of a judge. However, given the infrequency with which tacking is a dispositive issue in a jury trial, this rule is not likely to have far-reaching consequences. And presumably, the question could still be presented to a judge on summary judgment, by arguing that no reasonable jury could conclude that the purportedly tacked marks either do or do not create the same commercial impression.

Keywords: litigation, intellectual property, SCOTUS, trademark cases


Lesley McCall Grossberg, BakerHostetler, Philadelphia, PA



November 30, 2014

Federal Circuit Reverses Again on Covered-Business-Method Stay Denial

In Versata Software, Inc. v. Callidus Software, Inc., Case No. 2014-1468, the Federal Circuit again reversed a district court’s denial of stay pending covered-business-method (CBM) review proceedings—the second time the court has done so since July. See also VirtualAgility, Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014). In an opinion by Judge Chen, the court held that the lower court committed clear error with respect to each of the four factors comprising the CBM stay analysis under § 18(b) of the America Invents Act. Of particular interest is the court’s analysis of the first § 18(b) factor, which suggests that any CBM review—even on only a portion of the asserted claims—can tend to simplify the litigation, and thus, weigh in favor of a stay.


Factor 1: Simplification of Issues
The first § 18(b) factor asks whether a stay pending CBM review will simplify the issues of the case and streamline trial. The district court found that this factor weighed against a stay because, among other reasons, Callidus had initially petitioned for CBM review of only a subset of Versata’s asserted claims. The Federal Circuit rejected this idea, dismissing any “categorical rule that if any asserted claims are not also challenged in the CBM proceeding, this factor disfavors a stay.” Although CBM review of all asserted claims certainly “weighs more strongly in favor of a stay,” it may also simplify issues when only some of the asserted claims are challenged. The proper inquiry, the court explained, is to compare “what would be resolved by CBM review versus what would remain.” The court also took judicial notice of the fact that, during the pendency of Callidus’s interlocutory appeal, the Patent Trial and Appeal Board (PTAB) had instituted review of all remaining claims asserted by Versata—leaving “little doubt” that issues in the pending litigation would be simplified by CBM review.


Factor 2: Status of the Litigation
The second factor under § 18(b) asks whether discovery is complete and a trial date has been set. The district court, which appeared to have considered the posture of the litigation at the time Callidus’s stay motion was decided rather than filed, found this factor to be neutral at best. Again, the Federal Circuit disagreed. Generally, the appropriate time to gauge the second § 18(b) factor is when the stay motion is filed—although the district court may also consider advances in litigation until the date the PTAB institutes CBM review. In the case at hand, where fact and expert discovery was still ongoing and the parties were yet to engage in claim-construction exchanges, the second § 18(b) factor strongly favored a stay.


Factor 3: Prejudice & Tactical Advantage
The third factor under § 18(b) asks whether a stay would cause the nonmoving party undue prejudice or present the moving party with a clear tactical advantage. Because Callidus had counterclaimed with its own patents against Versata, the district court believed that Callidus was attempting to use a stay as both a sword and a shield—stalling Versata’s claims while pressing forward with its own. In fact, however, Callidus had moved to stay the entire case—rendering the district court’s swork/shield finding clearly erroneous. The Federal Circuit also rejected the suggestion that Callidus’s early motion practice in the litigation (including motions to dismiss and transfer venue) should be considered in the stay analysis. Absent “some basis to find otherwise,” litigants are “within their rights to seek a proper forum or to dismiss a claim.”


Factor 4: Burden of Litigation

The final factor under § 18(b) asks whether a stay would reduce the burden of litigation on the parties and the court. Looking again to Callidus’s early motion practice, the district court concluded that Callidus’s “tactics have actually increased the burdens of litigation, rather than reduced them.” The Federal Circuit rejected this “backward-looking” approach to the final § 18(b) factor. “The correct test,” the court explained, “is one that focuses prospectively on the impact of the stay on the litigation, not on the past actions of the parties.” If successful, Callidus’s CBM petitions could invalidate every asserted claim under Versata’s patents, thus relieving the parties and the court of the substantial burden of litigating claim construction, and noninfringement and invalidity defenses.

Keywords: litigation, intellectual property, covered-business-method, CBM, Versata, Callidus


Dane Voris, Cooley LLP, San Diego, CA



November 6, 2014

A Reduced Win for Oracle

In late August, the U.S. Circuit Court of Appeals for the Ninth Circuit affirmed several district court rulings, including one that a second trial for Oracle would be conditioned upon the rejection of a remittitur that was much lower than their initial jury award of $1.3 billion. However, the Ninth Circuit closely scrutinized the evidence offered by Oracle to support its damages calculation and held that the district court’s proposed remittitur of $272 million was too low.

Oracle brought a copyright infringement action against German software company SAP in 2007 for systematic and illegal downloading of Oracle software. SAP stipulated to liability, and a damages trial was held. The jury awarded Oracle $1.3 billion in damages, based on its determination of the fair market value of a hypothetical license. The district court granted judgment as a matter of law in favor of SAP, on the grounds that the evidence supporting the hypothetical license was too speculative, and ordered a new trial conditioned upon a $272 million remittitur measured by the copyright holder’s lost profits plus the infringer’s profits. After Oracle rejected the remittitur, the district court ruled that if a second trial occurred, Oracle could not offer evidence related to the hypothetical license’s value. Oracle appealed this ruling with the hopes of restoring the jury award of over $1 billion.

The Ninth Circuit panel affirmed the JMOL ruling, agreeing with the district court that “the evidence Oracle presented was insufficient to establish an objective non-speculative license price” because the evidence presented at trial “failed to provide ‘the range of the reasonable market value’ for the hypothetical license in question.” In particular, the panel gave limited weight to Oracle’s expert’s testimony on the value of Oracle’s lost sales because it was based on unsupported, overly optimistic sales assumptions.

It also held, however, that the district court erred in ordering the $272 million remittitur because the amount was below the maximum amount sustainable by the proof. The Ninth Circuit affirmed the district court’s use of $236 million in infringer’s profits, but concluded that the district court erred in not applying Oracle’s higher estimate of $120.7 million in lost profits, holding that the higher estimate accounted for the lost future revenues related to customers who permanently switched to SAP. The court remanded with instructions for the district court to offer Oracle the choice between a $356.7 million remittitur and proceeding with a second trial.

Oracle hoped to restore its $1.3 billion jury verdict, but instead got an additional $55 million. The Ninth Circuit ruling limited Oracle’s chances of a high recovery by affirming the district court’s ruling that Oracle may not pursue hypothetical license damages a second time. The non-monetary win for Oracle was the court’s support that the law does not require Oracle to prove it would have licensed its product to SAP in order to recover those hypothetical damages, saying, “We have never required a plaintiff in a copyright infringement case to show that it would have licensed the infringed material. We decline to impose such a requirement now.” As to the amount of those damages, the case serves as a reminder that both district and appellate courts may closely scrutinize the evidence offered in support of damages, whether of the lost profits variety or in the determination of a hypothetical license.

Keywords: litigation, intellectual property, copyright, Oracle, SAP, remittitur


— Katie Clements, Balch & Bingham, Birmingham, AL



October 22, 2014

Copyright Infringement or Transformative Work?

The fair use doctrine was recently examined and applied Fox News Network, LLC v. TVEyes, Inc., 2014 WL 4444043 (S.D.N.Y. Sept. 9, 2014). TVEyes is a media-monitoring subscription service that “records the entire content of television and radio broadcasts and creates a searchable database of that content.” This service allows subscribers to search keywords or phrases to determine and review an aggregation of instances of the search term appearing in the media. Subscribers include businesses and governmental agencies such as the White House, United States Army, and local and state police departments—the service is not available to members of the general public. Clips are limited to ten minutes in length, and a majority of the clips are two minutes or less. Users are required to agree to use the clips for internal purposes only.


Fox News took issue with TVEyes’ commercialization of its copyrighted broadcasts and sued for infringement. It contended that TVEyes’ service would have a detrimental effect on the existing market for rebroadcasts of its copyrighted content, which Fox News made available online and also licensed to third parties.


TVEyes raised a fair use defense, and both sides moved for summary judgment. The court began with the proposition that “[t]ransformation almost always occurs when the new work ‘does something more than repackage or republish the original copyrighted work.’” (Slip op. at 13, citing Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014).)


The court noted that “there is a strong presumption in favor of fair use for the defendant” when the copied work is being used for one of the purposes listed in § 107, such as criticism, comment, news reporting, teaching, scholarship, or research. It also observed that TVEyes’s service, by providing “the actual images and sounds depicted on television” as well as “the news information itself,” offered a “transformative” service “that no other content provider provides.” The court found the TVEyes service analogously “transformative” to the searchable database of scanned books at issue in Authors Guild v. HathiTrust and thumbnail images shown in search engine results as in Perfect 10 v. Amazon.com, but distinguished a rare recent case in which a court had found that the defendant, a news monitoring service for print news that aggregated content for subscribers based on keywords, had failed to prove its fair use defense. Associated Press v. Meltwater U.S. Holdings, 931 F. Supp. 2d 537 (S.D.N.Y. 2013).


Thus, the court decreed TVEyes’s use of Fox News broadcast content “transformative” in its discussion of the first fair use factor. It did then proceed to consider the other three factors, but it was clear that the transformativeness finding overshadowed the remaining factors. The second and third factors were found to be neutral and summarily disposed of. The fourth factor, the effect of the copied work on the market for the original, received closer inspection, but was resolved in favor of TVEyes insofar as it: (1) deleted all of the copied content every 32 days; (2) experienced few instances of sequential playback by subscribers of Fox News content, such that “no reasonable juror could find that people are using TVEyes as a substitute for watching Fox News broadcasts on television”; and (3) benefitted the public by allowing subscribing entities to use the service for correction of misinformation, regulatory compliance, reporting on and criticizing news broadcasts, and ensuring national security, among other uses. The court had already rejected the notion that commerciality of the allegedly infringing work could carry “presumptive force against a finding of fairness” in its discussion of the first factor.


As others have noted, including Judge Easterbrook in the Seventh Circuit’s recent decision in Kienitz v. Sconnie Nation, it is difficult to reconcile the broad view of transformativeness exemplified in cases like TVEyes, Authors Guild v. Hathi Trust, and Cariou v. Prince with the text of Section 106 of the Copyright Act, which grants the copyright holder the “exclusive right” to “prepare derivative works,” and Section 101, which defines “derivative work” as any “form in which a [preexisting] work may be recast, transformed, or adapted.” More broadly, decisions like TVEyes suggest that courts are moving away from viewing fair use as a narrowly-drawn exception to copyright holders’ exclusive rights in their works, to the view that fair use promotes the creation of transformative works and, thus, serves one of the goals of copyright law itself. The TVEyes opinion, which essentially presumed transformativeness of the work at the outset of the fair use analysis, indicates that the trend toward this a broader view of the role of fair use continues to gain traction in the federal courts.

Keywords: litigation, intellectual property, copyright, transformative, TVEyes, Fox News


Lesley McCall Grossberg and Robert C. Welsh, BakerHostetler, Philadelphia, PA




October 7, 2014

Sherlock Holmes: The Case of the Public Domain

In Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. 2014), in an opinion by Judge Posner, the Seventh Circuit clarified the interplay between copyrights in characters and derivative works, holding that characters whose copyright had expired entered the public domain even if the characters underwent development in later derivative works.

Of the 60 published works depicting Sherlock Holmes, only 10 have unexpired copyrights and are still protected—those published in 1923 or later. The plaintiff Klinger planned a collection of stories inspired by the Sherlock Holmes character. The defendant, the estate of Arthur Conan Doyle, sent a letter to the plaintiff’s publisher threatening to prevent distribution of any unlicensed book, convincing the publisher not to publish unless the plaintiff obtained a license. The plaintiff instead sought a declaratory judgment that all story elements introduced prior to 1923 were in the public domain.

The estate argued that because Klinger had yet to write the allegedly infringing book, Klinger’s claim was hypothetical, and accordingly, any ruling would be an improper advisory opinion. The court disagreed, explaining that there was an “actual controversy” because the estate had “made clear” that it would try to pressure retailers to refrain from distributing the book and had implicitly threatened to sue the plaintiff and its publisher for copyright infringement. The court also rejected the estate’s argument that the suit was premature, reasoning that the question of whether the pre-1923 stories are in the public domain could be determined without any need to know the contents of the book that Klinger planned to write.

Characters in the Public Domain
The estate did not dispute that pre-1923 works were in the public domain. Instead, the estate asserted a novel theory that characters may not be copied until the copyright expires on all works “in which that character appears in a different form.” The estate argued that Holmes and Watson were complex characters and that later stories continued to develop them. The court found no basis for the argument that later character developments could extend the protection of the earlier, “flatter” versions of the characters. “Alterations do not revive the expired copyrights on the original char­acters,” and therefore, the estate could claim protection “only for the incremental additions of originality” found in works written in 1923 or later. “When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors.” Accordingly, the copyrights on those elements “were not extended by virtue of the incremental additions of originality in the derivative works.”

In a later decision (2014 WL 3805116 (7th Cir. Aug. 4, 2014)), the court, using some very strong language, held that Klinger benefitted from the “very strong” presumption in favor of fees that applies following the successful defense against an allegation of copyright infringement, particularly as he accomplished a public good at personal risk to himself. The court repeatedly criticized the estate’s business model, which it called “a disreputable business practice—a form of extortion,” and suggested that the estate’s threat to prevent distribution might have been an antitrust violation. Between the estate “playing with fire” with its threats and a groundless “quixotic” appeal, the court found Klinger was entitled to his appellate fees.

Keywords: litigation, intellectual property, Klinger, Sherlock Holmes, character copyright


Paul Llewellyn, Richard De Sevo, Kyle D. Gooch, Kaye Scholer LLP, New York, NY




October 7, 2014

Supreme Court Considers Preclusive Effect of Prior Rulings

If the Trial Trademark and Appeal Board (TTAB) has found a likelihood of confusion between two marks, should that finding have preclusive effect—or, alternatively, be given some deference—in a subsequent trademark infringement case in federal court? The Supreme Court will weigh in on that question in B&B Hardware v. Hargis Industries, Inc. (No. 13-352). The district court in the case declined to give preclusive effect (or any deference at all) to the TTAB’s ruling that there was a likelihood of confusion between the parties’ marks, a ruling that was affirmed by the Eighth Circuit. Earlier this year, while a petition for a writ of certiorari was pending, the Supreme Court asked the Solicitor General’s office to file a brief expressing the views of the United States. Solicitor General’s amicus brief, which was filed in May 2014, takes the position that the Eighth Circuit erred in declining to apply claim preclusion to the likelihood of confusion analysis performed by the TTAB. The Supreme Court thereafter granted the cert. petition, and the case is now scheduled to be argued in the Court’s October Term 2014.


Paul Llewellyn, Richard De Sevo, Kyle D. Gooch, Kaye Scholer LLP, New York, NY




September 30, 2014

Seventh Circuit Reins In "Transformative" Fair Use Standard

On September 15, 2014, the Seventh Circuit unanimously ruled in Kienitz v. Sconnie Nation LLC that an alleged infringer’s use of a copyrighted photograph on a T-shirt constituted fair use. No. 13-3004, 2014 WL 4494835 (7th Cir. Sept. 15, 2014). The Seventh Circuit rejected the Second Circuit’s expansive view of copyright fair use in Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013), “that ‘transformative use’ is enough to bring a modified copy within the scope of § 107.” Instead, the court emphasized the statutory factors contained in § 107, “because asking exclusively whether something is ‘transformative’ not only replaces the list in § 107 but also could override 17 U.S.C. § 106(2), which protects derivative works.” Id. The court was skeptical of the Cariou decision because it did not adequately explain “how every ‘transformative use’ can be ‘fair use’ without extinguishing the author’s rights under § 106(2).”

In 2013, photographer Michael Kienitz sued Sconnie Nation for copyright infringement after it used an altered version of the plaintiff’s photograph of Madison, Wisconsin, Mayor Paul Soglin on a T-shirt. Mr. Keintz had taken the picture of Soglin at his inauguration in 2011, which Soglin then used as his official photograph on the city’s website.

Soglin, who had attended the first Mifflin Street Block Party when it began as a political activism event in 1969, stirred controversy when he announced plans to shut down the event he had a hand in creating. Sconnie Nation took the mayor’s official photograph, posterized it, stripped it of its color and background, added garish neon and superimposed the phrase “Sorry For Partying” in a sarcastic rebuke to the mayor’s apparent change in position. The “Sorry For Partying” shirts sold by Sconnie Nation turned a small profit.

Sorry for Partying

The Western District of Wisconsin granted summary judgment in favor of Sconnie Nation, holding that the defendant made fair use of the photograph. The Seventh Circuit affirmed, but on a different rationale than the district court.

The court focused on the four fair use factors, emphasizing the importance of the fourth factor, market effect. Most notably, the court questioned Cariou’s singular reliance on “transformative use” when interpreting and applying the fair use doctrine as it eliminates a copyright holder’s statutory right to prohibit derivative works under § 106(2). As in prior cases, the court asked whether the contested use was a complement (allowed) or a substitute (prohibited) for the original work. Thus, the court ruled a T-shirt was not a substitute for a photograph. More importantly, Kienitz had failed to argue how Sconnie Nation’s actions would injure his business ventures going into the future.

Although there have been criticisms of Cariou’s expansive application of the “transformative” standard in fair use analysis, Kienitz is the first circuit-level critique and represents a significant circuit split.


—Jessica Nam, American University Washington College of Law



September 19, 2014

Third Circuit Rejects Presumption of Irreparable Harm in Lanham Act Cases

The Third Circuit ruled in Ferring Pharmaceuticals v. Watson Pharmaceuticals on August 26 that “a party seeking a preliminary injunction in a Lanham Act case is not entitled to a presumption of irreparable harm but rather is required to demonstrate that she is likely to suffer irreparable harm if an injunction is not granted.” (Slip op. at 21.)  

The Third Circuit observed that while it had never recognized such a presumption in false advertising cases, the presumption had long been applied in trademark infringement cases. However, the presumption is no longer tenable in light of the Supreme Court’s rejection of categorical rules that would replace the traditional four-factor test for injunctions in eBay, Inc. v. MercExchange, 547 U.S. 403 (2006), and requirement in Winter v. NRDC, 555 U.S. 7 (2008) that a party seeking a preliminary injunction must demonstrate a probability, not possibility, of irreparable harm. 

Although eBay had arisen in the patent context, the court found its reasoning equally applicable to Lanham Act cases, joining the Ninth Circuit in so finding.  See Herb Reed Enters. v. Fl. Entm’t Mgmt., 736 F.3d 1239 (9th Cir. 2013). A petition for a writ of certiorari is pending in Herb Reed Enterprises. INTA has an amicus brief in support of a grant of cert.

Keywords: intellectual property litigation, Third Circuit, irreparable harm

Lesley McCall Grossberg, BakerHostetler, Philadelphia, PA



July 1, 2014

Supreme Court Weighs in on Patent-Eligible Subject Matter

On June 19, 2014, the United States Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'lunanimously held that the patent claims at bar were drawn to an abstract idea, and abstract ideas cannot become patent eligible by merely requiring generic computer implementation. The case concerned a patent for a way, using a computer, to mitigate “settlement risk,” or the risk that one party in a financial transaction will not fulfil its obligations. Justice Thomas announced the opinion of the Court. Justice Sotomayor concurred, joined by Justices Ginsburg and Breyer.

The patent disclosed a scheme for mitigating risk through the creation of a clearinghouse. Under the scheme, a computer acted as an intermediary between the two transacting parties. The computer created “shadow” credit and debit records that updated in real time, and allowed only transactions when the shadow records indicated that the mutual obligations of the parties would be upheld. Through this computerized approval process, the scheme mitigated the risk that one party would not fully perform its obligations.

Before reaching the Supreme Court, the district court and Federal Circuit Court of Appeals found the patent ineligible for protection under 35 U.S.C. § 101. In 2007, CLS Bank sued Alice Corp. for a declaratory judgment that Alice’s patents were not valid or enforceable, and that CLS Bank was not liable for infringement. The district court found for CLS Bank, holding that the patent was drawn to an abstract idea and therefore was not eligible for protection under § 101. Alice Corp. appealed to the United States Court of Appeals for the Federal Circuit. On en banc rehearing, a plurality of a deeply fractured Federal Circuit Court of Appeals found the patent ineligible, following Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012).   

In reviewing the patent, the Supreme Court sought to “distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention.” To do so, the Supreme Court applied the two-step Mayo framework: first determining whether the patent claims an abstract idea, among other unpatentable things, and second determining whether the claims—both individually and as an “ordered combination”—transform the nature of the claim into a patent-eligible application. The second step has been described as a search for an “inventive concept.”

The Supreme Court found an abstract idea, but not an inventive concept. First, the Court found the patent to be an abstract concept similar to “hedging,” as it is “a fundamental economic practice long prevalent in our system of commerce.” Second, the Court analogized the patent at issue to the patents found invalid in Mayo, Gottschalk v. Benson, and Parker v. Flook. By contrast, the Court found that the computer-implemented mathematical equation in Diamond v. Diehr was patent eligible because it contained extra steps that “transformed the process into an inventive application of the formula.”

Looking forward, some questions remain unanswered. For example, although the opinion in Alice Corp. clarifies the patentability of computer-implemented processes, the Court explicitly reserved the question of “the precise contours of the ‘abstract ideas’ category.” Further, to what extent must a computer-implemented patent take extra steps to gain protection under § 101? More generally, time will tell whether applications such as the one in this case should not be patent eligible, or whether we are following Alice Corp. down a rabbit hole.

Keywords: intellectual property litigation, abstract idea, patent-eligible, computer implementation

—Jarrad L. Wood, American University Washington College of Law, J.D. Candidate, 2015



June 20, 2014

Does Nautilus Avoid the "Zone of Uncertainty"?

On June 2, 2014, the Supreme Court eliminated the Federal Circuit’s “insolubly ambiguous” test for indefiniteness in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). Prior to Nautilus, the Federal Circuit held that a claim was not “insolubly ambiguous” if it was “amenable to construction, however difficult that task may be.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Citing the Supreme Court’s decision in United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942), the Federal Circuit explained that the purpose of the indefiniteness doctrine was to close the invention-stymieing “zone of uncertainty” by requiring that the claims be “reasonably clear-cut.” Exxon, 265 F.3d at 1375. The Federal Circuit thus crafted the “insolubly ambiguous” test for proving indefiniteness to give equal credit to the purpose of the requirement that claims be definite, as codified in 35 U.S.C. § 112(b), and the statutory presumption of validity accorded to all issued claims as set forth in 35 U.S.C. § 282 (and the attendant clear-and-convincing burden of proof). Exxon at 1375. The Federal Circuit reasoned that “[b]y finding claims indefinite only if reasonable efforts at claim construction prove futile,” the “insolubly ambiguous” test “accord[s] respect to the statutory presumption of patent validity.” Exxon, 265 F.3d at 1375.

The Supreme Court, however, found that the Federal Circuit’s “amorphous” test ran afoul of the very reasons for which the Federal Circuit established the test. Nautilus, 134 S. Ct. at 2130–31. The Court explained that “[i]t cannot be sufficient that a court can ascribe some meaning to a patent’s claims; . . . [t]o tolerate imprecision just short of rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’” Nautilus at 2130 (citation omitted). The Court also dismissed the notion that the “insolubly ambiguous” test was necessary to preserve the presumption of validity: the “presumption of validity does not alter the degree of clarity that § 112[(b)] demands from patent applicants; to the contrary, it incorporates that definiteness requirement by reference.” Nautilus at 2130 n.10 (citing 35 U.S.C. § 282, ¶ 2(3)). In place of the “insolubly ambiguous” test, the Court established a “reasonable certainty” test. Specifically, “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus at 2124. Although indefiniteness is a question of law, the Supreme Court chose to send the case back to the Federal Circuit to apply the “reasonable certainty” test in the first instance. 

The “reasonable certainty” test seems to set a lower bar for indefiniteness, but what impact the test will have depends on how litigants address the test and how the Federal Circuit implements it. Of course, reasonable minds can and do differ about how claim terms should be construed, often coming up with reasonable, but differing, constructions. In light of Nautilus, parties may rely increasingly on expert testimony to do battle over what one skilled in the art at the time of the invention would understand by the claims. Despite the Supreme Court’s view, implementation of the Nautilus test may run afoul of the Supreme Court’s own directive that “if the claim were fairly susceptible of two constructions, that [construction] should be adopted which will secure to the patentee his actual invention, rather than to adopt a construction fatal to the grant.” Smith v. Snow, 294 U.S. 1, 14 (1935) (citations omitted). In any event, should the Federal Circuit implement a standard contrary to the Supreme Court’s mandate, the Supreme Court could take up Nautilus for a second time, as it did with Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013).

In addition, the impact of Nautilus on indefiniteness for means-plus-function claims is unclear, given that indefiniteness for means-plus-function claims depends on whether “the specification fails to disclose structure corresponding to the claimed function,” as opposed to whether the claims are “insolubly ambiguous.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1114 (Fed. Cir. 2002). As a result, the Federal Circuit may clarify its test for means-plus-function claims in view of Nautilus

Nautilus has made indefiniteness one area of law to watch, as courts and litigants explore the contours of the new test over the coming months. 

Keywords: intellectual property, litigation, insolubly ambiguous, indefiniteness, Nautilus

Jeanne M. Heffernan and Leslie M. Schmidt, Kirkland & Ellis LLP, New York, NY



June 18, 2014

Lanham Act Claims for Misleading Product Description Can Coexist with FDCA Labeling Regulations

A unanimous Supreme Court (8–0, Justice Stephen Breyer recusing) ruled on June 12, 2014, in POM Wonderful v. Coca-Cola that one competitor may sue another for unfair competition under the Lanham Act for allegedly false or misleading product descriptions, notwithstanding that product labeling is regulated under the federal Food, Drug, and Cosmetic Act (FDCA) by the FDA.

Coca-Cola’s Minute Maid division makes and sells a juice blend that is labeled as “pomegranate blueberry,” even though the product contains just 0.3 percent pomegranate juice and 0.2 percent blueberry juice. Frustrated that the Coca-Cola product was made with predominantly less expensive apple and grape juices, yet connoted that it might have the same flavor profile as POM Wonderful’s own 85 percent pomegranate-15 percent blueberry drink, POM sued Coca-Cola under Section 43 of the Lanham Act for false or misleading product description.

The district court held that because Coca-Cola’s label conformed to FDCA regulations, POM’s Lanham Act suit was precluded, and the Ninth Circuit affirmed. After a star-studded oral argument in the Supreme Court in which Seth Waxman represented POM and Kathleen Sullivan argued for Coca-Cola, the latter being taken to task by Justice Kennedy when Sullivan suggested that POM didn’t sufficiently credit consumers’ intelligence—“Don’t make me feel bad, because I thought this was pomegranate juice”—the Court reversed.

Following its expansive view of Lanham Act standing from the Lexmark Int’l v. Static Control Components case, decided earlier this Term, the Court noted that POM was bringing suit as a competitor of Coca-Cola: “though in the end consumers also benefit from the Act’s proper enforcement, the cause of action is for competitors, not consumers.” This observation at the outset distinguished the POM Wonderful case from the flood of consumer suits that have been brought in recent years against food and beverage companies for allegedly misleading product labeling, many of which have been found to be preempted by the FDCA.

Turning to the statutory interpretation of the FDCA, the Court noted that the FDA apparently does not exercise significant oversight over the content of fruit juice labels; the relevant regulation only requires that a fruit juice blend label must either declare the percentage content of the named juice, or indicate that the named juice is present as a flavor or flavoring. Neither the text of the Lanham Act nor the FDCA contain any provision addressing or referring to the interplay between the two.

The Court found that harmonizing the FDCA and Lanham Act did not require preclusion of POM’s Lanham Act claim. Noting that the two statutes have co-existed since the Lanham Act was passed in 1946, the Court observed that Congress could have enacted a provision expressly preempting Lanham Act claims in favor of the FDCA, and the fact that it had not served as “powerful evidence that Congress did not intend FDA oversight to be the exclusive means” of ensuring proper food and beverage labeling. Far from interfering with the proper operation of the FDCA, the Court found, competitors’ Lanham Act claims might in fact further the same objectives: “Allowing Lanham Act suits takes advantage of synergies of multiple methods of regulation,” and competitors’ “awareness of unfair competition practices may be far more immediate and accurate than that of agency rulemakers and regulators.”

The Court’s view of the Lanham Act being a complement to, rather than precluded by, FDCA labeling regulations means that competitors bringing a false labeling claim have one less procedural hurdle to overcome. Conversely, brands should carefully consider the fact that FDCA-compliant labeling is insufficient to stave off unfair competition claims.

Keywords: intellectual property, litigation, unfair competition, product description, Lanham Act

Lesley McCall Grossberg, BakerHostetler, Philadelphia, PA



June 17, 2014

Supreme Court Eases Standard for Award of Attorney Fees in Patent Cases

In decisions in companion cases Octane Fitness v. ICON Health and Highmark v. Allcare Health, the Supreme Court made it easier for district courts to award attorneys’ fees to the prevailing party in patent litigation. In Octane Fitness, the Court rejected the Federal Circuit’s “unduly rigid” interpretation of 35 U.S.C. § 285 and held that an “exceptional” case justifying an award of attorney fee is simply “one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” In Highmark, the Court further held that district court decisions on fee awards under this standard are to be reviewed for abuse of discretion, rejecting the de novo standard applied by the Federal Circuit.

Writing for a unanimous Court, Justice Sonia Sotomayor stated the issue before the Court as whether the framework for fee awards set by the Federal Circuit in Brooks Furniture v. Dutailier Int’l Inc. is consistent with the text of § 285. In Brooks Furniture, the Federal Circuit held that a case is exceptional under § 285 only when (a) there has been material inappropriate conduct, such as willful infringement, inequitable conduct, or conduct that violates Rule 11; or (b) the litigation was both brought in bad faith and objectively baseless.

The Court rejected the Brooks Furniture rule as “overly rigid” and not supported by the statutory language or history. The Court first observed that the misconduct prong of the Brooks Furniture rule extends largely to independently sanctionable conduct. Under the new standard, district courts could award fees in cases where a party’s conduct is not independently sanctionable but is nevertheless “exceptional.” Second, the Court noted that in Brooks Furniture the Federal Circuit imported the fee-shifting standards from Professional Real Estate Investors, Inc. v. Columbia Pictures, but that case dealt with the sham exception to the Noerr-Pennington doctrine’s protection against antitrust liability, an issue that the Court found inapplicable here. Third, the Court found that the Brooks Furniture rule was so demanding that it would render § 285 superfluous in view of the existing power of courts to depart from the “American Rule” when a party has acted in bad faith or willfully disobeyed a court order. Finally, the Court rejected the Brooks Furniture requirement of “clear and convincing evidence” on the grounds that it had not interpreted comparable fee-shifting statutes to require that level of proof and nothing in § 285 demands a heightened burden of proof.

Having rejected the Brooks Furniture rule, the Court reverted to the plain language of the statute and dictionary definitions to support its holding. The Court compared its new standard to the standard under the Copyright Act, which is not reduced to a precise rule or formula, but instead relies on the exercise of equitable discretion. In Highmark, the Court went on to rule that this discretionary determination is to be reviewed only for abuse of discretion. 

The net effect of these rulings is that district courts now have greater discretion to award attorneys’ fees under 35 U.S.C. § 285, and the exercise of that discretion will now be reviewed under a more deferential abuse of discretion standard.

Keywords: intellectual property, litigation, attorney fees, abuse of discretion, patent litigation, § 285

Michael Padden, Pearne & Gordon LLP, Chicago, IL



June 16, 2014

SCOTUS Rejects Expanded Concept of Induced Infringement

In Limelight Networks Inc. v. Akamai Technologies, Inc., the Supreme Court unanimously rejected the Federal Circuit’s expanded concept of induced infringement and held that a defendant cannot be liable for induced infringement under 35 U.S.C. § 271(b) where no one has directly infringed the patent under § 271(a) or some other statutory provision.

Akamai obtained a $40 million verdict at trial based on direct infringement, but the Federal Circuit subsequently ruled in Muniauction Inc. v. Thomson Corp. that a defendant can be liable for direct infringement of a method patent only if it “exercises control or direction over the entire process such that every step is attributable to the controlling party.” Finding that Akamai had not satisfied the Muniauction test, the trial court granted judgment as a matter of law to Limelight and a panel of the Federal Circuit affirmed. On rehearing en banc, however, the Federal Circuit reversed, finding that the verdict could be supported on a theory of induced infringement under § 271(b). The Federal Circuit reasoned that a defendant can be liable for inducing infringement under § 271(b) even if no person had committed direct infringement because direct infringement can exist independently of a violation of § 271(a). That is, the “infringement” that needs to be induced under § 271(b), unlike direct infringement under § 271(a), is not necessarily limited to infringement by a single entity.

The Supreme Court found that the Federal Circuit’s reasoning “fundamentally misunderstands what it means to infringe a method patent.” Even if the Muniaution rule is mistaken, the Court argued, that is no reason to create a separate new concept of infringement under § 271(b): “the possibility that the Federal Circuit erred by too narrowly circumscribing the scope of 271(a) is no reason for this Court to err a second time by misconstruing 271(b) to impose liability for inducing infringement where no infringement has occurred.” Ultimately, the Supreme Court reversed and remanded the case back to the Federal Circuit, where it will have the opportunity to address the issue of liability under § 271(a).

This decision makes it clear that induced infringement cannot be used to avoid the impact of the Muniaution rule on divided infringement, but the vitality of the Muniaution rule remains subject to further review at the Federal Circuit and possibly the Supreme Court as well.

Keywords: induced infringement, direct infringement, patent, § 271(b)

Michael Padden, Pearne & Gordon LLP, Chicago, IL



February 10, 2014

Changes to the California Online Privacy Protection Act

California’s recent amendment to the California Online Privacy Protection Act of 2003 (CalCOPPA), increases the information that website and mobile application operators must disclose regarding their response to “do-not-track” signals.  Under the old law, operators already had to conspicuously post a privacy policy, which discloses to consumers categories of personally identifiable information (PII) the operator collects and with whom the operator shares such information. 

Now, an operator that collects PII about an individual consumer’s online activities over time and across third-party websites and online services must disclose in its privacy policy how the operator responds to browser do-not-track signals or other mechanisms that provide consumers with choices regarding the collection of such information. Alternately, the operator may provide a hyperlink to a webpage with a description, including the effects, of any program or protocol the operator follows that offers consumers a choice about online tracking. Operators must also disclose whether other parties may collect PII about an individual consumer while the consumer is using their website or mobile app. The new amendment does not require operators to respond to do-not-track signals or to honor a consumer’s choice not to be tracked.

PII is defined broadly under CalCOPPA and most operators have at least some California users. Therefore, it is likely this new amendment will impact most operators and they should review their current privacy disclosures for compliance.

The amendment took effect on January 1, 2014.  Operators have 30 days to comply with the amendment’s new requirements after being notified of noncompliance.  Noncompliant operators face fines of up to $2,500 per violation, which may include each download of a noncompliant mobile app.

Keywords: litigation, intellectual property, California Online Privacy Protection Act of 2003, amendment, personally identifiable information (PII), do-not-track signals, privacy policies, website operators, mobile app operators, compliance

Megan Donohue, Cooley LLP, San Diego, CA


February 10, 2014

Internet TV Heads to the High Court

On January 10, 2014, the U.S. Supreme Court granted certiorari in ABC, Inc. v. Aereo, Inc., a major copyright case involving free Internet TV. Broadcasters, including ABC, Disney, CBS, NBC, FOX, and PBS, among many others, filed suit against Aereo alleging that the company’s distribution of broadcast TV through the Internet without paying retransmission fees violated their copyrights.  Specifically, broadcasters took issue with Aereo’s infringement of their exclusive right “in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyright work publicly” under the 1976 Copyright Act, 17 U.S.C. § 106(4).

Aereo functions as a modern alternative to the “giant rooftop antenna or awkward rabbit ears” that were once required to watch free, over-the-airwaves TV. Although technically not free, for a small fee Aereo offers broadcast TV streaming live to a computer, phone, tablet or any other compatible device by housing and assigning individual antennas to each of its users. When a user logs on to an Aereo account, he or she has the option to either “watch” or “record” a particular TV show. Once the user selects to either watch or record a show, the individual antenna assigned to that user picks up the broadcast and makes a copy of the show.  If the user chooses the “watch” function, then the copy of the show is streamed to the user’s device through the Internet, and after roughly a 10-second delay from the actual broadcast, the user views the show “nearly live.”  If the “record” feature is enabled, the copy of the show is saved into the user’s account until the user is ready for playback.

Broadcasters claim that Aereo’s transmission of television programs to thousands of viewers constitutes a “public performance” of the programs. The Southern District of New York disagreed and refused to grant a preliminary injunction against Aereo.  ABC  v. Aereo, Inc., 874 F. Supp. 2d 373 (S.D.N.Y. 2012). The Second Circuit found that Aereo was not engaged in publicly performing broadcast shows and upheld the decision. WNET v. Aereo, Inc., 712 F.3d 676 (2nd Cir. 2012).  

The Second Circuit emphasized the important fact that Aereo creates a unique copy of each show requested by a user. When that copy is transmitted, whether immediately under the “watch” feature or later because it was recorded, the unique copy is sent only to the user that requested it. Because Aereo creates copies for its users to watch even if they choose to view it “nearly live,” the court found that an Aereo user was not watching the same stream of broadcast TV as a person with a cable subscription.  Finally, the Second Circuit rejected any suggestion by the broadcasters that Aereo’s actions should be aggregated to amount to a public transmission rather than thousands of private transmissions. 

Currently, Aereo is available in 11 major markets with plans to expand to an additional 16 markets in the near future. The Supreme Court’s decision will be one of not only major legal significance but also major industry significance, either ending free Internet TV once and for all, or reshaping broadcast TV as we know it.

Keywords: litigation, intellectual property, Internet TV, public transmission, copyright infringement, retransmission fees

Whitney Lipscomb, Balch & Bingham LLP, Gulfport, MS


February 7, 2014

U.S. Copyright Office Ponders "Small-Claims" Tribunal

In September 2013, the U.S. Copyright Office issued its Copyright Small Claims report. The report urges Congress to take a hard look at the creation of a forum that would allow copyright owners to pursue infringement matters under $30,000 arising under the Copyright Act, including declaratory judgments. In order to accomplish this, the report suggests the implementation of a tribunal, to be known as the Copyright Claims Board. This so-called “small-claims” system provides claimants with the opportunity to pursue smaller claims without being concerned about the cost of litigation and the difficulty of representing oneself in a copyright action. 

One of the key features of the proposed Copyright Claims Board is that participation is by the parties’ consent. Once the claimant provides notice of the filing of an action with the tribunal, the respondent can give consent by either an opt-out mechanism or by affirmative written consent, though the exact mechanism of consent has yet to be determined. If the respondent refuses to participate in the small-claims proceeding, a federal district court action would still be an option for the claimant should he choose to proceed. In addition to consent, other proposed requirements to bring an action in front of the tribunal are that (1) damages are capped at $30,000, and (2) the copyright owner must have registered the work or at least filed an application. 

While legal representation is allowed, the small-claims tribunal would be designed to allow parties to proceed pro se. Standardized forms and procedures, as well as the availability of staff attorneys, would facilitate a litigant’s self-representation.

In addition to claims arising under the Copyright Act, related contract and ownership issues may also be considered by the Copyright Claims Board; however, related trademark claims would not be subject to its jurisdiction.  Respondents can assert any applicable defense, including fair use, as well as counterclaims.  In addition, DCMA-related takedown notices would be considered by the small-claims tribunal.

Another important aspect of the Copyright Claims Board would be the administration of proceedings through online and teleconference means, though the tribunal would be centrally located at the Copyright Office.  Parties would not be required to personally appear but would submit written materials for consideration by a panel of three adjudicators, two with significant experience in copyright law and a third with experience in alternative dispute resolution.

Discovery is to be limited, allowing some requests for production of documents, interrogatories, and requests for admissions. Notably, the report did not recommend depositions—a concept it felt went against the idea of streamlining and making the process more cost-effective. There would be no formal motion practice nor would formal rules of evidence apply, both notions that encourage quicker decisions on the merits. Statutory damages would be available in another effort to streamline damages discovery. Damages would be limited to $15,000 per work, with a cap of $30,000. Finally, this tribunal would retain the ability to dismiss any claim without prejudice that it determined it could not adjudicate fairly, or if the issue was too complicated.

Decisions by the Copyright Claims Board would only be binding on the parties and claims at issue, could be administratively reviewed for error, and could be challenged in federal court. However, the proposed tribunal would not have absolute power to order injunctions, nor would it be able to enforce its judgments—the federal court would have to step in for that.

The potential of the Copyright Claims Board is promising in that it would give access to claimants who may not have had the ability or the wherewithal to enforce their copyrights before, it would cut down on legal fees for all involved, and it would result in faster adjudications for small claims. 

Keywords: litigation, intellectual property, small claims, tribunal, copyrights, U.S. Copyright Office, Copyright Act

Loren M. Lancaster, Balch & Bingham LLP, Birmingham, AL


December 9, 2013

Finding Invalidity Early under Section 101 Post-Ultramercial

The Federal Circuit recently indicated that dismissal of a patent infringement suit at the 12(b)(6) stage because the asserted patent claims are invalid under 35 U.S.C. § 101 for lack of eligible subject is the exception, not the rule.  Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013).  District courts, however, continue to grant motions to dismiss pursuant to Rule 12(b)(6) or 12(c) of the Federal Rules of Civil Procedure in light of the invalidity of the asserted claims under § 101. See, e.g., Lumen View Tech., LLC v. Findthebest.com, Inc., No. 13 Civ. 3599(DLC), 2013 WL 6164341 (S.D.N.Y. Nov. 22, 2013); UbiComm, LLC v. Zappos IP, Inc., No. 13-1029-RGA, 2013 WL 6019203 (D. Del. Nov. 13, 2013); Fuzzysharp Techs., Inc. v. Intel Corp., No. 12-CV-04413 YGR, 2013 WL 5955668 (N.D. Cal. Nov. 7, 2013); Content Extraction and Transmission, LLC v. Wells Fargo Bank, Nat’l Ass’n, Nos. 12-2501 (MAS)(TJB), 12-6960 (MAS)(TJB), 2013 WL 3964909 (D.N.J. July 31, 2013).

Also post-Ultramercial, the Federal Circuit described a two-step test for patent eligibility under § 101: (1) whether the invention fits one of the four statutory classes of patent-eligible subject matter set forth in § 101, and (2) whether a judicially recognized exception to subject-matter eligibility applies, such as abstractness. Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013).  In order to find a claim invalidly abstract, a court must identify the “fundamental concept wrapped up in the claim” and then find that the claim fails to introduce any additional substantive limitations that “narrow, confine, or otherwise tie down the claim.”  Id. (quoting CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1282 (Fed. Cir. 2013) (citations omitted)).

In Accenture, the Federal Circuit held that a computer program for handling insurance-related tasks was abstract and unpatentable.  The remaining four post-Ultramercial decisions finding invalidity under § 101 are district court holdings that also involve computer-related claims. The following concepts were found to be abstract: the extraction and processing of information from hardcopy documents; conditioning one action based on another; eliminating portions of well-known and established mathematical calculations; and multilateral matchmaking for financial transactions.

While Ultramercial stated that § 101 invalidity at the pleading stage is the exception, courts seem to view this as an opportunity to quickly dispose of questionable patents and the standards described in Accenture make it easier to do so.

Keywords: litigation, intellectual property, patent eligibility, infringement, invalidity, § 101, Ultramercial, Accenture

Andy Rinehart, Kilpatrick Townsend & Stockton LLP, Winston-Salem, NC


December 9, 2013

USPTO Interprets "Financial Product or Service" Broadly in CBM Review

The America Invents Act created many new mechanisms for post-grant review of patents by the U.S. Patent and Trademark Office (PTO), and in particular the Patent Trial and Appeal Board (PTAB). One mechanism is the transitional “covered business method” (CBM) review, which allows a party that has been sued for infringement of a certain class of patents to challenge the validity of the asserted patent(s) at the PTO on a wide range of grounds, without the petition deadlines and extreme estoppel associated with other similar PTO proceedings. 

For a patent to be eligible for CBM review, however, it must contain at least one claim directed to “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. . . .”  AIA § 18(d)(1); see also 37 C.F.R. §§ 42.300–304; 35 U.S.C. §§ 321–329. In applying this standard, the PTAB has explicitly noted that the legislative history indicates that the phrase “financial product or service” should be interpreted“broadly.” Apple Inc. v. Sightsound Technologies LLC, CBM2013-00019, Doc. 17 (PTAB Oct. 8, 2013).  Indeed, the legislative history explains that the definition was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”  77 Fed. Reg. 48734, 48735 (Aug. 14, 2012) (emphasis added).

For example, in Apple v. Sightsound, the PTAB rejected an argument that the AIA required a “nexus” between the claims at issue and a “financial business.” There, the PTAB held that the phrase “financial product or service” is “not limited to products or services of the ‘financial service industry.’” More recently, in Volusion, Inc. v. Versata Software, Inc., CBM2013-00017, Doc. 8 (PTAB Oct. 24, 2013), the PTAB granted CBM review for a patent containing database-related method claims with no financial-oriented limitations because the specification stated that the invention had “application to a wide range of industries” including “financial services” and the broad claim language did not limit the method to any particular product or service. 

Keywords: litigation, intellectual property, patent, America Invents Act, post-grant review, covered business method, CBM, financial

 Joshua Lee, Kilpatrick Townsend & Stockton LLP, Atlanta, GA


October 28, 2013

Introduction of the "Innovation Act"

On October 23, 2013, Rep. Bob Goodlatte (R-Va.) introduced a bill entitled the “Innovation Act” that contained several proposed amendments to Title 35 and the America Invents Act. The bill was introduced to “make improvements and technical corrections, and for other purposes,” and several of its provisions could significantly affect the landscape of patent litigation.

Pleading Requirements
The Innovation Act would require patent-infringement complaints to identify each specific patent and claim asserted, as well as every accused instrumentality by name or model number.  This requirement mirrors several jurisdictions’ local rules as to patent disclosures, but advocates for the bill assert that inclusion of this information in the complaint could streamline the pleading stage and discourage “shotgun” patent suits by a nonpracticing entity involving dozens or even hundreds of defendants.

Attorney Fees
The act states that a prevailing party in a patent lawsuit “shall” be awarded reasonable fees and expenses, unless the court determines the nonprevailing-party’s position was “substantially justified.”  While the bill does not define what constitutes substantial justification, the mere threat of this provision, if passed into law, could dramatically change the math behind calculating the “nuisance value” of threatened litigation.

The act proposes two major changes to the discovery stage of an infringement action. First, the bill limits discovery prior to a Markman hearing to “information necessary for the court to determine the meaning of terms used in the patent claim.”  Second, the act requires each party to produce “core documentary evidence” at its own cost, which includes patent application histories, technical specifications for accused instrumentalities, potentially invalidating prior art, licensing agreements, and profits attributable to the patent(s) at issue. Advocates for the bill assert that these provisions could make discovery faster, cheaper, and less contentious for patent litigants.

These provisions are just some of the alterations in the Innovation Act. There are several others. The act targets the proliferation of infringement actions by nonpracticing entities and could ultimately discourage unmeritorious claims.

Keywords: litigation, intellectual property, Innovation Act, patent infringement, nonpracticing entities, attorney fees, discovery, Markman hearing, American Invents Act

Andy Rinehart, Kilpatrick Townsend & Stockton LLP, Winston-Salem, NC


June 18, 2013

Defense Jury Verdict in Formerly Consolidated Patent-Infringement Action

When the America Invents Act (AIA) was signed into law in 2011, the rule changed for the joinder of defendants in patent-infringement actions. Plaintiffs could no longer join multiple defendants in a single matter where the defendants had different products all accused of infringing the same patent, but had no other connection with each other. Some cases filed against such groups of defendants after the effective date of the new joinder provision were severed, but consolidated for the purpose of pre-trial and discovery proceedings. See Norman IP Holdings, LLC v. Lexmark Int’l, Inc., 2012 WL 3307942 (E.D. Tex. Aug. 10, 2012) (Davis, J.). Such decisions have led some commentators to declare that courts were not living up to the spirit of the AIA’s new joinder provision.

Given the short amount of time since the passage of the AIA, no case that has been severed but consolidated for pre-trial purposes has gone to trial yet. Nevertheless, at least one example exists of a pre-AIA case, severed post-filing, which has begun a series of what could be as many as seven trials. The matter(s), pending in the U.S. District Court for the Eastern District of Texas, Marshall Division and originally captioned Alexsam, Inc. v. Best Buy Stores, L.P., 2:10-cv-93-MHS-CMC, could be instructive of the effect of the new joinder provision on other cases filed against multiple defendants.

The case was originally filed in 2010 by patent holding company Alexsam, Inc. as one matter against Best Buy Stores, L.P., Barnes & Noble, Inc., the Gap, Inc., J.C. Penney Company, Inc., McDonald’s Corporation, Home Depot USA, Inc. and Toys “R” Us-Delaware, Inc. for infringement of U.S. Patent Nos. 6,000,608 and 6,189,787—patents related to gift cards. After discovery had concluded and summary-judgment motions were briefed, the Honorable Judge Michael H. Schneider severed the matter into seven separate cases due to unique factual circumstances presented by the defendants. After severing the matters for all purposes, Judge Schneider consolidated them again for the limited purpose of conducting invalidity and inequitable conduct trials. A jury recently found that the asserted patents were not invalid, and Judge Schneider found that Alexsam had not committed inequitable conduct in a reexamination proceeding.

Best Buy subsequently settled with Alexsam. Later, Alexsam dropped its claims under the ‘608 Patent against the remaining defendants.

On June 3, the first trial of the remaining defendants began against Barnes & Noble. Alexsam sought $72 million in damages from Barnes & Noble for infringement of the ‘787 Patent. Over the course of five days, Alexsam put on one fact witness (the inventor), three technical experts, and one damages expert. Witnesses for Barnes & Noble included one technical expert, one damages expert, and six live fact witnesses. The jury was presented with a total of 20 hours of evidence by both sides. Barnes & Noble was represented by Fisch Hoffman Sigler LLP of Washington, D.C., which also represents all other remaining defendants in the matter. Alexsam was represented by Fitch, Even, Tabin & Flannery LLP of Chicago, Illinois.

On June 7, after more than five hours of deliberation, a jury of six women and one man returned a unanimous verdict of no infringement of claims 1 and 19 of the ‘787 Patent.

One other trial is currently scheduled against the Gap. Pretrial conferences are scheduled for all of the other matters. The progress of the Alexsam cases could represent the future of patent- infringement cases against multiple defendants where many of the defendants opt not to settle.

Keywords: litigation, intellectual property, patent infringement, multiple defendants, America Invents Act, joinder provision

Peter Scoolidge, Fisch Hoffman Sigler LLP, Washington, D.C.



May 20, 2013

TTAB Determination of Likelihood of Confusion Not Binding

When the Trademark Trial and Appeal Board (TTAB) refuses to register a mark based on a finding of likelihood of confusion, does that finding have a preclusive effect in a subsequent trademark-infringement action in federal court?  In a recent decision, a divided panel of the U.S. Court of Appeals for the Eighth Circuit not only denied preclusive effect to a TTAB finding, but held that the district court properly excluded the finding from evidence. B&B Hardware, Inc. v. Hargis Industries, 2013 WL 1810614, 2013 U.S. App. LEXIS 8926 (8th Cir. May 1, 2013).

B&B Hardware, owner of the mark SEALTIGHT, successfully opposed Hargis Industries’ attempt to register the mark SEALTITE. The TTAB found that there was a likelihood of confusion between the two marks. When B&B subsequently brought a trademark-infringement suit in federal court, however, the judge declined to admit the TTAB finding into evidence and refused B&B’s request that the decision be given preclusive effect, or any deference whatsoever. A jury found that there was no likelihood of confusion between the marks.

The Eighth Circuit panel affirmed the district court’s ruling. First, because the TTAB is not an Article III court, the district court was not required to give the TTAB decision preclusive effect. Second, the factors the TTAB considers for trademark-registration purposes differed from the factors considered under the Eighth Circuit’s likelihood-of-confusion test for trademark infringement. In particular, the TTAB test places greater emphasis on the appearance and sound of the marks, while the Eighth Circuit test places greater emphasis on marketplace usage of the marks and products. Third, the burden of persuasion was reversed. At the TTAB, Hargis had the burden; in the infringement action, B&B had the burden.  For these reasons, the Eighth Circuit agreed with the district judge that the TTAB’s ultimate conclusion was not entitled to preclusive effect and would have had minimal probative value,  have been misleading and confusing to the jury, and was properly excluded from evidence.

The dissenting judge would have given preclusive effect to the TTAB’s determination of likelihood of confusion, at least in cases where the TTAB had considered the marks in a marketplace context. The different analytical approach taken by the TTAB was not enough, according to the dissent, to justify relitigation of the issue.

Keywords: litigation, intellectual property, TTAB, trademark infringement, likelihood of confusion, issue preclusion, deference

Paul Llewellyn, Richard De Sevo, Kyle D. Gooch, Kaye Scholer LLP, New York, NY


May 20, 2013

Court Approves "Appropriation Art" as Transformative Fair Use

In a significant copyright ruling involving the application of the fair use doctrine to artistic works, a Second Circuit panel unanimously held that the use of copyrighted photographs “as raw material” to create new works can constitute fair use even though the new works do not “comment” on the plaintiff photographer, the photographs “or on aspects of popular culture closely associated with” the photographer or the photographs.  Cariou v. Prince, 2013 U.S. App. LEXIS 8380 (2d Cir. April 25, 2013). 

Rejecting the district court’s conclusion that the defendant must “transform” the copyrighted work for one of the specific purposes mentioned in the fair use provision of the Copyright Act— “criticism, comment, news reporting, teaching . . ., scholarship, or research”—the Second Circuit held that “alter[ing] the original with ‘new expression, meaning, or message’” to create new works that differed in composition, presentation, scale, color palette and media, could also constitute fair use.

The court’s expansive view of fair use should provide artists with substantial leeway to transform copyrighted works for artistic purposes, although the court’s failure to provide a clear standard by which it determined that 25 of the 30 of the photographs were fair use as a matter of law will likely result in additional litigation as courts struggle with defining the application of fair use to artistic works. Undoubtedly, courts also will be asked to address the extent to which the Second Circuit’s analysis of fair use in Cariou applies outside the context of artistic works.

Keywords: litigation, intellectual property, Cariou, fair use, artistic works ,copyright, transformative, Richard Prince

Paul Llewellyn, Richard De Sevo, Kyle D. Gooch, Kaye Scholer LLP, New York, NY


March 14, 2013

Calling All Women IP Litigators!

The Women & IP Law Subcommittee of the Intellectual Property Committee of the ABA’s Section of Litigation fosters business development, networking, and collaborative opportunities for women IP litigators, both outside and in-house counsel. The Subcommittee typically sponsors popular events at ABA Annual Meetings.  Past programs have included a panel of women in-house counsel of leading IP companies such as Hewlett-Packard Co., Oracle Corporation, Epson America, Inc., and The Gap Inc., who discussed ways for women to expand their practices.

In addition, at last year’s Annual Meeting in Chicago, the subcommittee hosted an interactive workshop program on negotiation skills for women to help develop and enhance skills in negotiating for better assignments as a junior lawyer, better and equal compensation for women associates and partners, and developing more effective negotiation skills when negotiating the terms of engagement with clients and prospective clients.

For the upcoming August 2013 Annual Meeting in San Francisco, the subcommittee is excited to announce that it is planning another panel discussion with women in-house counsel from leading Bay Area companies, as well as a networking event following the panel presentation.  We will be sending along further information in the next two months regarding this program, which will provide a unique opportunity for women to learn from and network with top IP litigators.

To become a member of the subcommittee and receive information about these exciting events and networking opportunities, please contact one of our cochairs below. To join, you must first be a member of the Intellectual Property Committee of the ABA’s Section of Litigation.

We look forward to hearing from you.


Janet T. Munn, Rasco Klock
Darcy L. Jones, Kasowitz, Benson, Torres & Friedman LLP
Linda Resh DeBruin, Kirkland & Ellis LLP
Theresa M. Gillis, Mayer Brown LLP
Kathyleen A. O’Brien, Reed Smith
Women & IP Subcommittee Cochairs

Keywords: litigation, intellectual property, women, in-house, networking, ABA Annual Meeting

Janet T. Munn, Rasco, Klock Perez & Nieto, P.L., Coral Gables, FL


January 23, 2013

The Bare Meaning of Actual Damages in Copyright Infringement

Everyone is a journalist. And today, more than ever before, the camera truly is always watching. At the expense of her own job, Ohio newscaster Catherine Balsley (also known as Catherine Bosley) learned this lesson the hard way. While on her vacation in Florida during the spring of 2003, she entered a wet T-shirt contest and danced nude at a bar. As she bore all for the stage, an amateur photographer captured the entire show and posted the goods to his website. This career-threatening ordeal led to Balsley’s firing. But she was later able to acquire all rights to the photos and register the copyrights with the U.S. Copyright Office in August of 2004.

About a year later, once Balsley was working at a different news station and attempting to reestablish her public image, a Hustler magazine reader thrust her back into the public light. LFP, Inc. [Larry Flynt Publications] publishes Hustler magazine. “Hot News Babes” is a recurring feature in the magazine. The reader nominated Balsley as a “hot news babe” in August of 2005, merely telling Hustler that it could find the wet t-shirt photos of Balsley on the Internet. Hustler’s editors perused the Internet and selected one of the photos which Balsley owned the copyright to. After consulting its attorney, Hustler determined that it could publish the photo as fair use and used it in the February 2006 issue. To her dismay, Balsley again discovered that her bare-chested mishap was plastered for the world to see. She subsequently filed suit for copyright infringement (among a host of other claims) against LFP in February 2008. Direct copyright infringement was the only claim to survive for trial. Ultimately, the jury awarded Balsley $135,000 in damages and the district court awarded $133,812.51 in attorney’s fees to Balsley as the prevailing party. On appeal, the Sixth Circuit affirmed the district court’s ruling.

LFP admitted to copying, without permission, the photo that Balsley owned a valid copyright to. However, it claimed that this use was fair use. Under 17 U.S.C. §107, fair use does not infringe copyright. To make this determination, a four-prong test must be considered: (1) the purpose and character of the use (whether commercial in nature and if the new use is “transformative”); (2) the nature of the copyrighted work; (3) the amount and substantiality of the use; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

According to the fair use factors, the court held that LFP’s use was not fair use for the following reasons: (1) LFP’s use was wholly commercial (to sell more magazines); (2) the copyrighted photo was a mixture of fact and creativity, and could have been reasonably decided in Balsley’s favor (creative works garner more copyright protection); (3) LFP used the entire photo; and (4) even though Balsley had no intent to exploit her copyrighted works herself, LFP’s use directly competed for market share for the photo.

Yet, the groundbreaking part of this case was the Sixth Circuit’s first analysis of the burden of proof issue for “actual damages.” Pursuant to 17 U.S.C. §504(b): “the copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.” Even the Sixth Circuit acknowledged that the phrase “attributable to” creates confusion, especially since it appears twice. After identifying that other circuits have determined that a copyright owner’s burden of proof requires that she demonstrate a relationship between the gross revenue and the infringement, the Sixth Circuit goes a completely different direction. Instead, the court holds that other courts have imprecisely construed the first “attributable to” phrase and, in a very textualist manner, decides that the statute should be interpreted by its plain meaning.

Based on the bare language, the court concluded that Balsley, and now plaintiffs in general, have only one requirement: to prove defendant’s gross revenue. Balsley met this burden because LFP admitted that its gross revenue from the February 2006 issue of Hustler totaled $1,148,000 (of which Balsley argued that $265,000 in profits were attributable to her photo). The court did agree with sister circuits that the gross revenue number must have a reasonable relationship to the infringing activity. That said, the court emphasized that it was not imposing the more stringent burden of proving a “causal connection” on copyright owners. Thus, the Sixth Circuit refused to raise the burden on copyright owners beyond that outlined by the plain language of the statute.

Moving forward, this outcome proves one thing for certain: with respect to damages issues in copyright cases, the Sixth Circuit remains “owner friendly.” The court’s interpretation means that copyright owners will not have a high bar to clear in order to prove an infringer’s profits. Once the owner has established the infringing activity, she need only prove that infringer’s gross revenue generally; after completing that task, the owner can earnestly await a hopefully substantial award in her favor.

Keywords: litigation, intellectual property, copyright, actual damages, fair use, gross revenue, burden of proof

Daniel D. Quick and Jerome Crawford, Dickinson Wright PLC, Troy, MI


August 9, 2012

Christensen Brothers Win Appeal Against USA Network

“The Force” of law was with Hayden Christensen—famous for his role as Anakin Skywalker in the Star Wars prequels—and his brother, Tove Christensen, last month, when the U.S. Court of Appeals for the Second Circuit overturned an order of the U.S. District Court for the Southern District of New York that had granted defendant Universal Television Network’s motion to dismiss the Christensen brothers’ lawsuit against the network. The suit, Forest Park Pictures v. Universal Television Network, Inc. (the television production arm of NBCUniversal, a subsidiary of Comcast Corp., which controls USA Network), was originally brought in 2010 and alleges a breach of contract between Forest Park Pictures, the brothers’ production company, and Universal Television Network over USA Network’s show, Royal Pains.

The suit alleges that in 2005, Forest Park developed an idea for a show called Housecall, “in which a doctor, after being expelled from the medical community for treating patients who couldn’t pay, moves to Malibu and attends to the rich and famous.” Forest Park created a series treatment for the concept that included storylines and character bios, and the Christensen brothers met with Alex Sepiol, a programming executive at USA Network, to pitch the idea. The brothers allege that, although Sepiol was receptive to the idea, nothing ever materialized after the meeting. Subsequently, in 2009, USA began airing Royal Pains, a show that the brothers claim is a rip-off of their concept for Housecall that focuses on the life of a “concierge doctor” providing medical services to the wealthy residents of the Hamptons.

Judge Colleen McMahon had originally dismissed the suit on the grounds that the claims brought against USA Network were preempted by the Federal Copyright Act. She ruled that, because the allegations entailed the theft of uncopyrightable ideas, the suit had no merit. The Second Circuit, however, disagreed, based largely on the fact that the plaintiffs chose to allege breach of implied contract rather than copyright infringement. The Second Circuit ruled that a claim under state law for breach of implied contract, including a promise to pay, is quantitatively different from a suit to vindicate a right included in the Copyright Act and is therefore not subject to federal preemption.

Judge John M. Walker Jr., writing for the Second Circuit, explains [PDF] that, even though uncopyrightable material may fall within the subject matter of the Copyright Act, the equivalency requirement for preemption is not met in this case because “extra elements” exist that create qualitative differences between a contract claim and a copyright-violation claim. Among other things, the Copyright Act, unlike contract law, “does not provide an express right for the copyright owner to receive payment for the use of a work.” The court, accepting the plaintiffs’ version of the facts as true for the purpose of the motion, concluded that an implied contract, including a promise to pay, was formed on the Christensen brothers pitching their show concept to Sepiol and that USA Network’s failure to compensate Forest Park Productions for Royal Pains gave rise to a cause of action not subject to preemption. The court also ruled on two other issues, holding that, based on the choice of law rules for a federal court in New York sitting in diversity jurisdiction, California law should be applied in this case and that, in addition to the court’s finding of no preemption, the plaintiffs’ complaint is adequate under the Supreme Court standards in Twombly and Iqbal.

The Second Circuit’s ruling comes on the heels of another important decision for the entertainment industry, Montz v. Pilgrim Films & Television, Inc. In that suit, NBCUniversal suffered a big loss when the U.S. Court of Appeals for the Ninth Circuit ruled that a state-based contract allegation surrounding the SyFy Channel’s Ghost Hunterswas not preempted by federal copyright law and could be brought even though a copyright claim had been dismissed; the Supreme Court subsequently denied a petition for certiorari. Together, these two rulings present significant new challenges for studios in defending themselves against idea-theft lawsuits, especially because the two decisions come from circuits that cover the two main entertainment hubs of the United States—New York and Los Angeles. Studio execs and legal teams will likely pay close attention to see how the Christensen suit ultimately plays out on remand to the Southern District of New York.

The Christensen brothers and Forest Park Productions are represented by David Marek of Liddle & Robinson, LLP. Universal Television Network, Inc., is represented by Susan Weiner, deputy general counsel for NBCUniversal Media LLC, as well as Robert Penchina and Amanda M. Leith of Levine, Sullivan, Koch & Schulz, LLP.

Keywords: litigation, intellectual property, Royal Pains, Christensen, breach of contract, copyright, preemption, idea-theft

Benjamin E. Steinberg, NYU School of Law, Class of 2014


June 11, 2012

Supreme Court Rescues Works from the Public Domain

In 1994, Congress passed the Uruguay Round Agreements Act (URAA) to ensure that the United States complied with its obligations under the international Berne Convention. Because Article 18 of the Berne Convention required that works that were still protected in their home countries must also be protected abroad, the URAA rescued from the public domain a number of foreign works that, in the United States, had either lost their copyright protections or had never been protected at all. These provisions of the URAA have been subject to years of legal challenges, but on January 18, 2012, the Supreme Court held that Section 514 of the URAA does not exceed Congress’s authority under the Copyright Clause. Golan v. Holder [PDF].

When I attended oral arguments for Golan on October 5, 2011, Tony Falzone, executive director of the Fair Use Project at Stanford Law School, focused on the petitioners’ arguments that Section 514 not only violated the “limited times” portion of the Copyright Clause, but it also impeded the First Amendment rights of those who used the public-domain foreign works, known as “reliance parties.”

Justice Ginsberg responded to the petitioners’ oral argument by distinguishing issues associated with reviving copyright for works whose natural terms had expired from those of granting a work the copyright term that it should have had all along. Ginsberg’s distinction proved a key issue in Golan.

Ultimately writing for the majority in January, Justice Ginsberg noted that Section 514 neither overreached congressional authority nor deprived citizens of their First Amendment rights. As the Court explained, Section 514 merely “put foreign works on equal footing with their U.S. counterparts.” The Court also noted that the URAA already provides protection to reliance parties who began to use these works while they were in the public domain. The holder of a restored copyright must provide notice to such reliance parties before the copyright can be enforced against them, to prevent parties from being “blindsided.”

Quoting Justice Ginsberg’s opinion in Eldred v. Ashcroft, which upheld Congress’s lengthening of the copyright term against constitutional challenges, the Court reiterated that the Copyright Clause enables Congress to “determine the intellectual property regimes that . . . will serve the ends of that Clause.” Congress’ belief that complying with an international copyright agreement would further the aims of the Copyright Clause situates Section 514 within congressional authority; the Court thus held that extending copyright protection to foreign works previously in the public domain was not inherently outside of congressional authority.

Although the decision will withdraw significant numbers of foreign works from the public domain—Picasso paintings, Prokofiev symphonies, and Hitchcock films among them—the Court reiterated that rights to those works will now be in the marketplace alongside those of American auteurs whose works have long been afforded copyright protections.

Justice Breyer, joined by Justice Alito, filed a dissenting opinion. Justice Breyer focused on the First Amendment issues raised by the majority opinion, arguing that removing works from the public domain “in literal terms, ‘abridges’ a pre-existing freedom to speak.” Breyer also noted as significant that, while copyright is intended to incentivize the creation of new works, the URAA “does not encourage anyone to produce a single new work.”

The American Bar Association filed an amicus curiae brief in support of respondents, urging the Court to uphold the URAA.

Keywords: litigation, intellectual property, Golan v. Holder, copyright, Supreme Court, Berne Convention, public domain

—Amanda M. Levendowski, NYU School of Law, Class of 2014


May 7, 2012

Cartoons and Chicken: Trademark Rights after Licenses Expire

How many of us, when we think of Louisiana Fried Chicken, think of Popeye the Sailor? The Northern District of Georgia may soon find out. This case highlights the extent to which copyrights and trademarks can become intertwined in cross-marketing. AFC Enterprises, Inc., the parent company of the Popeyes Louisiana Fried Chicken, one of the world’s largest fast-food-chicken chains, could very well be at risk of losing the use of the Popeyes name. AFC is seeking a declaratory judgment against Hearst, Inc., stating that AFC need not negotiate for or renew any licensing agreement with Hearst if AFC ceases use of and does not intend to use any of Hearst’s copyrighted “Popeye the Sailor” cartoon characters after December 31, 2012.

King Features Syndicate, a unit of Hearst, holds the copyright on the Popeye character, who first appeared in a comic strip published in 1929. In 1976, AFC acquired an exclusive license from Hearst to use the famous cartoon character in connection with the fast-food chain’s business and advertising in the United States. Today, AFC franchises and operates nearly 2,000 Popeyes restaurants, and, according to the complaint, AFC owns 422 trademark registrations for Popeyes-related marks throughout the world. Although AFC has used the Popeye character as “spokesperson” for the chicken chain for nearly 40 years, in 2008, it began to phase out the character. AFC’s complaint [PDF] states that the restaurant has phased out all use of the characters domestically and is requiring that the few remaining international franchises that still use them to cease by December 31, 2012, when AFC intends to allow the license to expire. The fast-food chain also states on its website that the chain was originally named after “Popeye Doyle,” a character portrayed by actor Gene Hackman in the 1971 Academy Award-winning film, The French Connection, rather than the cartoon character.

On the expiration of the existing agreement between AFC and Hearst, AFC believes it will have the right to continue to use the Popeyes trademark and all associated marks related to the fried-chicken chain. The agreements into which the parties have entered over the years recognize and acknowledge each party’s respective rights—AFC to its registered trademarks in its designated classifications and Hearst in its copyrights of cartoon characters’ images and likenesses. AFC alleges in its complaint that, during the course of the business relationship, Hearst has explicitly and implicitly acknowledged AFC’s ownership of the Popeyes trademark through its contracts with AFC. AFC points to a provision of the agreement that states that “nothing herein shall be construed to require AFC’s discontinuance of the ‘POPEYES’ mark for [its] restaurant services or food products after this agreement is terminated.”

AFC’s claim for declaratory judgment is most likely the result of a threat on behalf of Hearst to block AFC’s use of the Popeyes name beyond the terms of the parties’ existing licensing agreement. AFC’s complaint cites a September 2001 letter from Hearst in which Hearst’s lawyers claimed that Hearst could assert rights in the Popeyes trademark and that, if the licensing agreement were terminated, AFC could be prohibited from using its own trademark. In the 2001 correspondence, Hearst’s counsel claimed that, if the agreements were terminated or canceled, at minimum, AFC would not be able to make any use of the Popeyes marks outside of restaurant services.

This declaratory judgment, if granted, would recognize that AFC is free to use its Popeyes trademarks in the absence of a licensing agreement with Hearst and that AFC therefore has no obligation to negotiate for or renew its agreement with Hearst if it ceases its use of Hearst’s copyrighted cartoon characters. On January 23, 2012, Hearst answered AFC’s complaint, alleging that AFC is using this cause of action as leverage in negotiations for a deal that would allow AFC to continue using the cartoon character’s name in connection with the chicken chain. Hearst claims that AFC went to court without telling Hearst, “rather than honor its agreement to engage in good faith negotiations.” Hearst wants the case to either be thrown out or transferred to a federal court in New York.

This case provides a useful warning of the risks of taking on another entity’s intellectual property for marketing and advertising purposes. And the agreement between Hearst and AFC emphasizes that, where one party’s intellectual property rights stem from the use of another party’s licensed material, the greatest dangers may only arise after the agreement expires.

Keywords: litigation, intellectual property, declaratory judgment, license, trademark, characters

—Keturah Carr, NYU School of Law, Class of 2013


March 23, 2012

Apple Battles Samsung for Smartphone/Tablet Market

Trying to decide whether to buy a Samsung Galaxy Tab 10.1 or one of Apple’s iPads? If you are currently in Europe, a battle has been escalating between the two companies, and each is trying to make that decision a lot easier by having the other banned. Since April 2011, Apple and Samsung have been in court over each company’s respective smartphones and tablet computers. It began with Apple claiming that Samsung had “slavishly” copied its technology, distinctive user interface, and even packaging design when it came to several of Samsung’s smartphones and its Galaxy Tablets.

In August 2011, the first of the patent-infringement claims asserted by Apple was resolved in Europe. A court in the Hague dismissed all of Apple’s claims other than those relating to one patent: EP 2059868. The remaining patent covers Apple’s interface for viewing and navigating through photos on a touchscreen phone. Apple was granted a preliminary injunction against Samsung sales, limited to phones due to the scope of the patent, including Samsung’s Galaxy S, Galaxy S II, and Galaxy Ace models. Though the injunction on its surface may be directed to sales from the Netherlands to other European countries, Samsung’s distribution may effectively expand the injunction to a “de facto European-wide ban.” Samsung itself, however, has questioned the importance of the injunction.

Turning to tablets, in August 2011, Apple sued in the Netherlands to have Samsung’s Galaxy Tab 10.1 banned there. However, the court held that Samsung’s tablet was sufficiently different from Apple’s European design patent for Apple’s iPad and thus declined to ban the tablet computer. More recently, in January, Apple had its appeal of that ruling dismissed. Samsung has used these decisions to bolster its arguments that Samsung is an innovator who is being unfairly targeted.

Samsung has also taken the offensive, suing Apple in Germany. A district court in Mannheim, Germany, has ruled, however, that Apple did not infringe the patent asserted by Samsung against the iPhone and iPad. Apple returned the volley by filling a new lawsuit in Düsseldorf, Germany, aimed at another 10 models in Samsung’s Galaxy family of smartphones.

Lest the reader think that all the excitement is happening abroad, a judge in San Jose recently ordered Samsung to turn over pre-production samples of its Droid Charge, Infuse 4G, Galaxy S II, and Galaxy Tab 10.1 and 8.9 to Apple—all products that Samsung is preparing to introduce to the U.S. market. Samsung was later ordered to produce source code for its products to Apple as well. The court allowed this discovery so that Apple can determine whether or not to seek a preliminary injunction against any or all of the produced smartphones. The results of discovery, however, are limited to outside counsel eyes only, so neither Apple nor its in-house counsel will get to see Samsung’s products or marketing. Samsung has turned the tables back on Apple, asking for Apple to hand over information on the iPad 3 and iPhone 5, so as to head off any additional infringement claims from Apple down the road. This seems unlikely, as Samsung has already released samples and images of its own forthcoming products to the media and limited members of the public, whereas such images and samples are not yet available for the iPad 3 and iPhone 5.

There will probably not be a resolution to this conflict anytime soon, as each side tries to keep from losing its market in the United States and in Europe. However, a compromise between the two companies could happen. Who knows? Maybe there is an app for that.

Keywords: litigation, intellectual property, smartphone, Galaxy, Samsung, Apple, iPad

—Isabel Ajuria, NYU School of Law, Class of 2014


March 23, 2012

Federal Circuit Gives ITC Jurisdiction over Chinese Actions

In a 2–1 decision, the Federal Circuit has decided that the International Trade Commission (ITC) has statutory authority to prevent the importation of goods that were made in China by a secret process developed in the United States by a U.S. company where the process was obtained through trade-secret misappropriation in China. TianRui Group Co. v. International Trade Commission, 661 F.3d 1322, Case No. 2010-1395 (Fed. Cir. Oct. 11, 2011).

Some will no doubt argue that this decision is court-sponsored protectionism. Good or bad, it provides a vehicle for U.S. companies to protect the misuse of their intellectual property rights in China if the misappropriator imports goods into the United States that were created using intellectual property protected under U.S. law.

Keywords: litigation, intellectual property, Federal Circuit, China, International Trade Commission, trade secrets

—Vic Souto, WilmerHale, New York, New York


March 20, 2012

ICANN Begins Expansion of the Domain Name System

Beginning on January 12, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) has been accepting applications for new generic Top-Level Domains (gTLDs). gTLDs are roots such as .com, .gov, and .org used to indicate the character of the owner of an address or the intended purpose of the site located there. ICANN’s decision to allow new gTLDs represents one of the largest-ever expansions of the internet landscape, as it will allow a broad range of parties, including businesses, cities, and industry groups, to register their own unique domain names. There are currently 22 existing gTLDs, in addition to approximately 225 country-specific domain names. But this new program would allow for the registration of any generic word, including .brand, as well as the registration of domain names with non-Latin characters.

ICANN is instituting a rigorous and expensive application process for the first phase of this expansion, with a March 29, 2012, deadline to initially register and April 12, 2012, as the last day to submit the actual application for a new gTLD string. The time and expense of this application process may deter some potential applicants. Applicants must pay an initial $5,000 registration fee, which will be credited against a $185,000 application fee on an official submission for each independent string. Initially, there will also be quarterly maintenance fees of $6,250. In addition to these financial hurdles, applicants will undergo a 9–20 month, multi-phased approval process. On May 1, 2012, ICANN will publicly reveal all applied-for domain names, and the initial evaluation will begin on June 2. During this evaluation, third-party evaluators will consider a variety of issues, including the applicant’s intended implementation of the gTLD string, whether similarities exist with existing domain names or other requested gTLDs, whether applicants have demonstrated appropriate technical standards and financial resources, and whether requested strings are appropriate for the registrant. The initial evaluation period will end on November 12, 2012, and applicants failing this phase can request an extended evaluation until November 29, 2012. Approved applicants can then proceed with setting up their newly acquired domain name registries. Due to the complexities of those applications undergoing extended evaluation, ICANN does not have a timeline for completing the extended evaluations.

While ICANN has been vague about the benefits of this new system, merely pointing to the business opportunities it can create, commentators have articulated various benefits. Experts believe this new system can optimize web navigation by creating more memorable domain names and allowing for geographic specificity and that it can reduce phishing scams by legitimizing email addresses and create new business models. Despite these predicted benefits, the new system has also faced criticism. The Coalition for Responsible Internet Domain Oversight (CRIDO), a joint organization established by the Association of National Advertisers (ANA) and consisting of 102 trade associations and 59 individual companies, fears that cybersquatting and phishing claims may lead to significant legal costs and a burdensome requirement of defensive registrations—essentially forcing companies to spend large amounts to register gTLDs to prevent abuses. Additionally, Esther Dyson, ICANN’s founding chairman, has suggested that gTLDs will create confusion across the domain name system and increase costs to domain name registrants without actually enhancing value.

ICANN has implemented several mechanisms it believes will prevent cybersquatting and protect against trademark infringement. As such, they are hoping to avoid defensive registrations by applicants who have no intention of actually operating the registry. Experts believe that the high initial costs and extensive application process will weed out any would-be cybersquatters. Additionally, anyone can formally object to applications [PDF] once they are publicly revealed on May 1, 2012. These objections will be filtered through ICANN’s pre-existing Dispute Resolution Procedures (DRP) and will be administered by independent Dispute Resolution Service Providers (DRSP). Objections can be raised on any of four grounds: confusion with an existing or applied-for gTLD, legal rights infringements, public interest or morality objections, and communal objections against a specifically targeted string. Thus, the onus will be on parties to review these applications to determine whether any infringe the party’s intellectual property. Finally, once a new gTLD is launched, the operators must adhere to specified rights protection mechanisms. These rights-protection mechanisms will allow for rapid suspension of domain names in clear-cut cases of infringement and call for the establishment of a trademark clearinghouse—once a party’s trademark is verified in this clearinghouse, the party will have a 30-day sunrise period to claim any domain names using or infringing its trademark and subsequently will be notified if anyone attempts to register a domain name with its trademark.

Keywords: litigation, intellectual property, ICANN, gTLD, copyright, infringement, cybersquatting, domain names

—Stephen Flug of NYU School of Law, Class of 2014


March 5, 2012

WWE Hit with Lawsuit from Former AWA Wrestler

World Wrestling Entertainment (WWE) is being sued yet again, this time by a former wrestler. Douglas Somerson, more commonly known by his wrestling persona, “Pretty Boy” Doug Somers, filed a complaint against the WWE, along with cofounders Vince and Linda McMahon, in Georgia state court on six counts, alleging that the defendants used his name, likeness, and persona in a series of DVDs without authorization. Somerson, who previously wrestled for the American Wrestling Association (AWA) from the 1960s to the mid-1980s, alleges that the WWE and the McMahons, for whom he never worked, used video footage of his past matches on several DVDs commemorating the career of Shawn Michaels—without permission and without ever paying him royalties.

The complaint contains claims against all of the defendants for invasion of privacy, violation of the right of publicity, and violation of the Georgia Uniform Deceptive Trade Practices Act (GUDTPA); against the WWE alone for unauthorized use of intellectual property and unjust enrichment; and against the McMahons for negligent supervision. Somerson asserts in his complaint that he is in very poor health as a result of his wrestling career, having suffered more than 400 concussions and inoperable injuries to his neck, back, knee, and foot. He is seeking unspecified damages along with unpaid royalties, injunctive relief, attorney fees, and costs.

In January, the defendants removed the suit to federal court (N.D. Ga.) based on federal original jurisdiction and supplemental jurisdiction, positing that the Federal Copyright Act of 1976 [PDF] preempted all of the state-law copyright claims. Once removed, the WWE and the McMahons sought a more definite statement regarding the plaintiff’s allegations regarding the illegal use of the plaintiff’s name and likeness in “books, dolls, and other commercial productions,” which the defendants claim are completely unfounded. The defendants also filed a wide variety of motions to dismiss, alleging that Somerson failed to state a claim entitling him to relief under Fed. Rule Civ. Pro. 12(b)(6) and the heightened pleading requirements of Bell Atlantic v. Twombly and Ashcroft v. Iqbal; that several claims’ statute of limitations have run, time-barring them; that the court lacks personal jurisdiction under Fed. Rule Civ. Pro. 12(b)(2); and that they were improperly served under Fed. Rule Civ. Pro. 12(b)(4).

The crux of the WWE and McMahons’ defense is that their use of footage containing Somerson is completely legitimate based on their purchase of the rights to all footage from the AWA. As such, the defendants argue that they have the right to use the footage without paying royalties to Somerson and that their use is protected by the First Amendment. They further argue that most of the plaintiff’s claims fail as a matter of law and that all of his claims, with the exception of negligent supervision, are preempted by federal copyright law.

The WWE has been the subject of numerous, and frequently quite visible, law suits in the past, some successful and some not. One suit by the Worldwide Wildlife Foundation resulted in the name change from the WWF to the WWE, and another suit for withheld royalties resulted in an $800,000 jury verdict for former wrestler and Minnesota Governor Jesse “The Body” Ventura. The WWE, in its motion to dismiss, cites a previous case in which it defeated claims of copyright infringement that it claims involved similarly “baseless and preempted” allegations as Somerson’s.

The outcome of the motions filed by the WWE and the McMahons could potentially have far-reaching implications. The WWE is preparing to launch its own TV network in April on the day of one of its biggest pay-per-view events of the year, WrestleMania 28. Should Somerson succeed on even one of his claims, it could subject the WWE and the McMahons to suit by countless other former wrestlers for the unauthorized use of their names and likenesses. The WWE would not only be exposed to significant monetary liability, but it also might lose its ability to use purchased footage on its new TV network. More broadly, a Somerson victory might raise important questions for other entertainment companies that currently rely on purchased rights to archival footage without specifically addressing potential personality rights. For now, the WWE and the McMahons must simply await Somerson’s response to their motions, along with the court’s decision.

Somerson is represented by Edward M. Gilgor of Edward Gilgor LLC. The WWE and the McMahons are represented by several lawyers from both K&L Gates LLP and Taylor Feil Harper Lumsden & Hess PC.

Keywords: litigation, intellectual property, copyright, preemption, likeness, WWE

Benjamin E. Steinberg of NYU School of Law, Class of 2014


February 22, 2012

European Union Signs Anticounterfeiting Trade Agreement

On January 26, 2012, the European Union (EU) and 22 of its member states signed the Anticounterfeiting Trade Agreement (ACTA). The ACTA was previously signed in October 2011 by a number of countries, including the United States, Canada, and Japan. The ACTA is intended to provide an effective means for the international enforcement of intellectual property rights (IPR). Member states will ensure that procedures are available permitting effective action against infringement. Beyond civil enforcement (Articles 7–12), the agreement provides for border measures (Articles 13–22) and criminal sanctions (Articles 23–26). Also, it requires effective IPR protection on the Internet (Article 27).

Formal negotiations on the ACTA started in 2007. Informal steps were undertaken by the United States and Japan in 2006 that were quickly joined by the EU, Canada, and Switzerland. The drafters’ decision to keep negotiations widely informal and secret until the release of the draft text in 2010 was the biggest obstacle to public acceptance. In addition to the lack of transparency from this unusual procedure, negotiations were accompanied by a suspicion of conspiracy from the beginning. Mistrust of the drafters’ motives was further nurtured by an initially extensive scope of protective measures. An earlier version provided for a “three-strike” rule allowing disconnection of Internet users in cases of online IPR violations and the imposition of intermediary liability on Internet service providers (ISPs) for carrying infringing content. The EU feared an impairment of freedom of expression and the right to privacy (for example, by its citizens’ potentially being subject to searches of their personal belongings and e-media at the border). Finally, the ACTA is neither part of the World Intellectual Property Organization (WIPO), nor of the World Trade Organization’s (WTO) body of agreements. It thus never had the institutional backing and legitimacy of the WIPO or the WTO.

The final version of the ACTA has shown public fears to be unwarranted. It appears that it will not result in a substantial upward alteration of EU protection standards, and it will not be significantly incongruent with trade-related aspects of intellectual property rights (TRIPs) or any WIPO agreement. This is because most contested issues raising concerns during negotiations and the drafting process are absent from the final text. Notwithstanding, some problems persist.

EU lawyers are still concerned that its actual implementation may be problematic. These concerns include, for instance, the modification of border measure rules or the inclusion of private, nonprofit IP use into the scope of criminal sanctions.

As to the ACTA’s impact on international trade and competition, the agreement will very likely prove to be a paper tiger. The major emerging economies have not been involved in the negotiations, and it does not appear that they intend to adopt the ACTA in the near future. Because the initial draft has no real teeth, however, even the accession of China, India, or Brazil would hardly enhance their domestic protection levels. See extensively EU Parliament/Policy Department, The Anti-Counterfeiting Trade Agreement (ACTA): An Assessment [PDF], EXPO/B/INTA/FWC/2009-01/Lot7/12, 7.

By and large, the ACTA will prove to be much ado about (almost) nothing. It will not alter the EU or any other TRIPs member’s system of IPR protection. Some changes could ensue. One example is the extension of border measures to all types of trademark infringement, not only those concerning counterfeit goods as currently provided for under the EU acquis. However, no remarkable impairment of existing rights and freedoms will ensue. The ACTA will not provide competitive benefits. In practice, the agreement will neither provide new and unknown opportunities for right owners, nor alarming threats for the public.

Keywords: litigation, intellectual property, Europe, anticounterfeiting, international IPR protection

Prof. Tim W. Dornis, Leuphana University Lüneburg, Germany


February 17, 2012

The Situation vs. the Fitchuation

MTV’s Jersey Shore reality show features Italian Americans living and working for the summer in Seaside Heights, New Jersey. In its four seasons on the air, viewers have watched the eight cast-member roommates live, drink, love, drink, work, and drink their way through life in Seaside Heights, Miami Beach, and Italy. The show quickly became a cultural phenomenon, spawning catch phrases and lingo that permeated the vernacular and catapulting the cast members to reality-show stardom and D-list celebrity status. For Jersey Shore viewers, “GTL” is understood to mean “gym, tanning, laundry.” However, for Michael Sorrentino, better known as “The Situation,” one of the show’s breakout cast members, it now means “gym, tanning, litigation.”

Sorrentino has flexed his muscles in three separate trademark-infringement disputes over the past year. First, in May, Sorrentino, through his company, MPS Entertainment, LLC, brought a trademark-infringement lawsuit in the U.S. District Court for the Southern District of Florida against his father, Frank Sorrentino, and his father’s one-time business partner, Robert Fletcher, for the unauthorized use of the trademark “The Situation” and Sorrentino’s name, image, and likeness. MPS Entertainment, LLC v. Fletcher, Case No. 1:11-cv-21765-PCH (S.D. Fla. May 16, 2011). The case was quickly settled, and the court permanently enjoined the defendants from using the trademark “The Situation,” bolstering Sorrentino’s claim to his nickname.

Sorrentino later confronted the website MyGTLFuel.com, the vendor of an energy drink purporting to “fuel” a lifetstyle that Sorrentino claimed referred to his exploits. Though Sorrentino may not own a trademark in GTL, the MyGTLFuel website was taken down.

Then, on November 15, 2011, Sorrentino filed suit against Abercrombie & Fitch Stores, Inc. (“A&F”), also in the U.S. District Court for the Southern District of Florida, asserting claims for federal and common-law trademark infringement and related unfair-competition claims under both the Lanham Act and the Florida Statutes. In response to an A&F publicity stunt wherein A&F offered to pay Jersey Shore cast members to stop wearing its clothes. MPS Entertainment, LLC v. Abercrombie & Fitch Stores, Inc., Case No. 1:11-cv-24110-JAL (S.D. Fla. Nov. 15, 2011). Notably, at or around the time A&F made its offer to Sorrentino, it was selling T-shirts bearing the slogans “The Fitchuation” and “GTL . . . You Know The Deal,” arguably references to Jersey Shore and Sorrentino in particular.

A&F responded on December 12, 2011, with a motion to dismiss and a separate motion to strike. A&F argues the complaint should be dismissed for failure to state a claim under Fed. R. Civ. P. 12(b)(6) because Sorrentino does not own a valid federal or state trademark registration for either asserted trademark, “The Situation” or “GTL;” Sorrentino does not own any valid, recognizable common-law rights in any “GTL” trademark; A&F’s use of “GTL” and “The Fitchuation” were not trademark uses; and the referenced T-shirts are permissible parodies.

Sorrentino asserts that MPS Entertainment owns federally registered trademarks for “The Situation” and “GTL;” however, as A&F points out, Sorrentino has only applied to register those marks with the U.S. Patent and Trademark Office. The only registration that Sorrentino owns is for a stylized mark, “Situation,” Registration No. 3,635,203, that it acquired through an assignment from a third party and that A&F argues is invalid as an assignment in gross. Further, A&F alerts the court to Viacom International, Inc.’s (the parent company of MTV) ownership of the registration “GYM TANNING LAUNDRY,” Registration No. 4,014,420, as well as a pending application, Serial No. 77/960,143.

A&F sought to strike 13 of the 17 trademark applications Sorrentino attached to his complaint, claiming such applications do not relate to clothing and are therefore irrelevant. Sorrentino has since entered an amended complaint, voluntarily withdrawing several claims, and A&F have since renewed their motion to dismiss, reasserting various defenses.

For all of the parties’ bluster, the litigation raises various interesting trademark issues. Sorrentino’s claim relates to a nickname very much tied to him, possibly invoking the well-known Bo Ball case. A&F asserts that MTV failed to “blur” the cast’s clothing and may have suggested an endorsement, which in today’s culture seems a rare error. But A&F’s offer to pay the cast to not wear its brand could be seen as trading on the cast’s likenesses for a sort of reverse endorsement, leading to A&F’s first amended defense. Meanwhile, season five of Jersey Shore began airing in January 2012. The cast’s latest T-shirt labels remain unknown.

Keywords: litigation, intellectual property, trademark infringement, right of personality, endorsement

—Abby Dritz Salzer, Trenam Kemker, P.A., Tampa, Florida


January 11, 2012

The Debate over the Protect-IP Act and SOPA

The Internet is abuzz with discussions about Congress’s latest proposed legislation to address the ever-growing problem of online copyright infringement. The Senate’s bill is called the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (Protect-IP Act), and the House of Representatives’ bill is called the Stop Online Piracy Act (SOPA). Although the House and the Senate each have their own versions of the proposed legislation, the heart of each version is essentially the same—they allow the U.S. government and copyright owners to more effectively combat online copyright infringement. Whether the proposed legislation goes too far, however, is an issue of heated debate.

The stated purpose of the proposed legislation is to “prevent online threats to economic creativity and theft of intellectual property” and to “promote prosperity, creativity, entrepreneurship, and innovation by combating the theft of U.S. property.” Both the Protect-IP Act and SOPA contain provisions that would allow the attorney general to seek, and courts to issue, injunctions against websites that are “dedicated to infringing activities” and owned or operated in a foreign country. Such injunctions would not only be issued to the infringing website, but also to U.S-based Internet service providers, Internet search engines, payment network providers, and Internet advertising services that are connected with, link to, or do business with the infringing site. Copyright owners may also seek such injunctions, but their relief is limited to payment network providers and Internet advertising services. The goal, apparently, is to cut off contact with the infringing site, thereby effectively protecting copyright owners from infringement.

Many people, however, are strongly opposed to the proposed legislation, labeling it the Internet Blacklist Bill. Opponents argue that it will do little more than stave off lost revenues for the entertainment industry at the expense of society’s right to freedom of speech and expression. They also argue that the proposed language of the legislation is vague and overbroad, which will allow the government and copyright owners too much leeway in choosing whom to file suit against. They argue that this could allow major corporations to file complaints against startups or rival companies merely to prevent competition or stifle innovation, rather than to legitimately attempt to protect their intellectual property rights. Lastly, those opposed to the proposed legislation argue that blacklisting domain names would force U.S. ISPs to not redirect users to the appropriate IP address, which in turn would lessen the universal nature of the Internet and raise serious technical and security concerns.

In response, those in favor of the proposed legislation say that it will not unduly hinder free speech or expression because it is aimed at preventing copyright infringement, and illegal activities are not protected conduct. In addition, they argue that by helping eliminate the massive threat of online infringement, the proposed legislation would actually foster innovation and investment in intellectual property, and thereby stimulate economic growth. Supporters also point out that online copyright infringement undermines the U.S. economy and deprives state and local governments of much-needed tax revenue. Finally, supporters of the proposed legislation argue that the alleged technical and security concerns arising from blocking domain names are “completely unfounded and without merit.”

The Protect-IP Act and SOPA are moving through the congressional gauntlet faster than usual, with votes possibly occurring before the end of January. Congressmen from both sides of the political spectrum have supported and opposed the proposed legislation, and there is no shortage of blogs, webpages, and news sites that are closely following and discussing this potentially revolutionary piece of legislation. Certain high-profile websites are even considering temporarily “blacking out” their sites as a form of protest against the bills. The Internet certainly raises unique issues that lawmakers have never before been forced to address. Doing so in the appropriate way, by balancing all the competing interests of everyone affected, is sure to be a challenge worth paying attention to.

Keywords: litigation, intellectual property, Protect-IP, SOPA, Internet, copyright infringement

Kollin Zimmermann, Ropers, Majeski, Kohn, & Bentley, Los Angeles, California


May 26, 2011

Federal Circuit "Fixes" Inequitable Conduct Law

On May 25, 2011, the Federal Circuit issued the much awaited en banc decision about patent inequitable conduct in Therasense, Inc. v. Becton, Dickinson & Co. [PDF]. According to a dissent, the court “comes close to abolishing [the doctrine of inequitable conduct] altogether.” Slip op. dissent at 5.

In a surprise decision, the court majority narrowed the materiality test for inequitable conduct to “but-for materiality” as a general matter. Explaining the application of the new rule to the important situation of undisclosed prior art, the court said, “When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” Slip op. at 27. Thus, patent applicants have a different assurance in this standard than in the past as they consider whether to disclose what they judge to be marginal prior art.

The court also narrowed the intent test to a tight recitation of the Kingsdown, Star Scientific, and Scanner Techs. standards. “[T]o meet the clear and convincing evidence standard, the specific intent to deceive must be the ‘single most reasonable inference above to be drawn from the evidence.” Slip op. at 25. Adding emphasis, the court said that “the evidence ‘must be sufficient to require a finding of deceitful intent in the light of all the circumstances.’” Therefore, “when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found.” Slip op. at 26.

Moreover, the court stated that there is not to be a “sliding scale” balancing materiality and intent and that intent may not be inferred solely from materiality. Slip op. at 25.

Thus, the court’s six-judge majority opinion, written by Chief Judge Rader for himself and Judges Newman, Lourie, Linn, Moore, and Reyna (appointed in 2011), represents the court’s abandonment of the “reasonable examiner” standard of materiality, the gross negligence standard of intent, and the balancing of materiality and intent. It also represents the court’s rejection of current “Rule 56” (37 CFR 1.56). On Rule 56, the court found that even its standards of materiality were too broad.

Somewhat unusually, however, the majority opinion stated that “but for” materiality and the rest of its test for inequitable conduct were subject to an exception—one for a patentee who “has engaged in affirmative acts of egregious conduct.” Slip op. at 29. Little else was said about the exception, leaving it largely unbounded in its structure and standards.

The opinion had a four-judge dissent written by Judge Bryson and joined by Judges Gajarsa, Dyk, and Prost, but it dissented as to materiality alone. It would have retained the PTO standards of Rule 56.

In an interesting third opinion, Judge O’Malley, who was until recently a district court judge, joined the majority as to intent but dissented from the majority—and dissented from the dissent—as to materiality. Judge O’Malley said both the majority and dissent “eschew[ed] flexibility in favor of rigidity.” Slip. op. concurrence at 4.

Of course, the opinion today may not be the final word, as the Supreme Court has not spoken to patent inequitable conduct since the 1940s.

Keywords: litigation, intellectual property, inequitable conduct, Federal Circuit

— Charles W. Shifley, Banner & Witcoff, Ltd.


May 10, 2011

Judge Finds Joinder of Divergent Accused Infringers Improper

In multi-defendant patent cases, a defendant may use a motion to sever strategically to show the court the lack of connectedness between the actions of the various defendants, to show why a joint trial would be inappropriate, and even to ensure that co-defendants, which are often direct competitors, will not have the ability to access documents produced during the case, even on an attorneys’-eyes-only basis.

In Interval Licensing, LLC v. AOL, Inc., Case No. C10-1385 MJP (W.D. Wash. Apr. 29, 2011), the plaintiff alleged that 11 separate defendants each infringed four patents. Several of the defendants moved to sever or dismiss the actions under Federal Rule of Civil Procedure 20(a), which “allows a plaintiff to join several defendants in one action if ‘(A) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and (B) any question of law or fact common to all defendants will arise in the action.’” Slip op. at 2. Because there were “no allegations that the Defendants have operated together or acted in concert to infringe on the patents” and “[e]ach Defendant operates differently and offers products that often compete with those of other Defendants,” the court found that joinder was improper under Rule 20(a) and severed the actions. Slip op. at 4. The court found severing and not dismissal to be the proper remedy.

However, there may be little or no practical effect from the court’s decision to sever the actions in this specific instance because the court further decided to consolidate all 11 actions for pretrial and trial purposes and apply a common scheduling order. Slip op. at 4. The court cited Rule 42(a) as the source of its power to consolidate the actions. Rule 42(a) allows consolidation at the court’s discretion where there are common issues of law or fact. Here, there would be a common issue of law relating to the overlapping patents.

The court relied on Ninth Circuit case law to support its decision, noting that the interpretation of joinder rules in the Fifth Circuit is different and may allow joinder in cases such as this, thus distinguishing cases from the Eastern District of Texas that found joinder proper under Fifth Circuit precedent. So, make sure to check the precedent in your circuit court of appeals before moving to sever.

Keywords: litigation, intellectual property, motion to sever, joinder

— Chad S.C. Stover, Connolly Bove Lodge & Hutz, LLP, Wilmington, Delaware


April 28, 2011

Federal Circuit to Review Divided Infringement En Banc

Inventors define their own property rights by drafting their own patent claims. They contemplate the potential infringers. They contemplate what those potential infringers are excluded from doing. An inventor should also know how and by whom the invention might be infringed. When an inventor chooses claims that may require more than one infringer, a divided infringement situation arises. The Federal Circuit recently addressed such claims in McKesson Technologies Inc. v. Epic Systems Corp. [PDF], No. 2010-1291 (Fed. Cir. Apr. 12, 2011).

A divided panel found no infringement—no single party was responsible for infringing all claim elements. Judge Bryson concurred with Judge Linn’s opinion, writing separately to note that en banc review might be appropriate. Judge Newman dissented, arguing that the court was departing from the “prior panel rule” that requires appellate panels to conform to the earlier of conflicting panel precedent.

Keywords: litigation, intellectual property, Federal Circuit, divided patent infringement

— David G. Barker, Snell & Wilmer, LLP.


April 19, 2011

Supreme Court Hears Arguments in Microsoft v. i4i

On April 18, 2011, the U.S. Supreme Court heard oral arguments in the closely watched case of Microsoft Corp. v. i4i Limited Partnership, et al. At issue in this case is the proper standard for challenging the validity of a U.S. patent.

The Patent Act, at 35 U.S.C. § 282, states in relevant part that

A patent shall be presumed valid. . . . The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

Microsoft challenged the validity of i4i’s patent when it was accused of infringement, alleging that the patent was invalid in view of an i4i software product that was developed and released before the critical date of the asserted patent. During discovery, i4i was unable to produce the underlying source code for this product on the grounds that the product was old and that the records and code had been destroyed during the ordinary course of business. Microsoft proceeded with its invalidity challenge using the evidence it was able to obtain, but the jury ultimately concluded that the evidence was insufficient to meet the clear and convincing standard of proof required by the Federal Circuit and found in favor of i4i. Microsoft had sought a jury instruction that only required a preponderance of the evidence to prove invalidity, and Microsoft appealed the denial of that instruction.

The Federal Circuit affirmed, citing its line of precedent requiring that invalidity be proven by clear and convincing evidence.

Oral Arguments
During oral arguments, the historical underpinnings of the clear and convincing standard took center stage. Justice Ginsburg began with a question to Microsoft’s counsel regarding what it was asking the Court to do with Justice Cardozo’s analysis in its RCA decision (Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1 (1934)), referring to that decision’s statement that one asserting the invalidity of a patent “bears a heavy burden of persuasion.” Justice Kagan also asked if the RCA analysis can be read as broadly establishing the heightened standard. Microsoft’s counsel responded that the reference to a “heavy burden” was made in the context of a dispute over who was the true inventor of a patent in question and that it had more to do with the reliability of oral testimony than it did with creating a higher overall burden of proof.

Microsoft’s primary point was that the language of the Patent Act itself did not expressly recite a standard of proof needed for overcoming the presumption of validity and that the pre-1952 body of case law was too inconsistent to conclude that a pre-1952 “clear and convincing” standard existed and was codified into the act. For example, Microsoft argued that before the act, some courts reduced (or removed) the presumption if the prior art in question was not considered by the PTO, while other courts had even reversed the presumption—requiring the patentee to demonstrate the validity of the patent. Microsoft asserted that the 1952 act clarified the matter by establishing a presumption of validity without defining a standard of proof for overcoming that presumption and that in the absence of such a defined standard, the preponderance standard is the one that should have been used.

Justice Alito appeared to agree on the statutory interpretation issue. In questioning i4i’s counsel, Justice Alito noted that he could not see where the Patent Act’s language articulated the clear and convincing standard for overcoming the presumption of validity. i4i responded by noting that the phrase “presumed valid” carries its pre-1952 understanding, which (following RCA) i4i asserted included a heavy burden on the one asserting invalidity. The deputy U.S. solicitor general gave an example from the criminal law context on this point—the phrase “presumption of innocence” does not expressly state that it can only be overcome if there is proof beyond a reasonable doubt, but that standard is nevertheless understood from the phrase. i4i asserted that this understanding was “solidified and unanimous” at the time of the 1952 act’s passage. i4i also noted that a committee report in the legislative history of the 1952 act stated that it was codifying existing law on the presumption of validity and that the heightened standard was this existing law.

Another i4i point, and one that drew chuckles in the courtroom, was what its counsel referred to as Congress’s “active acquiescence” to the Federal Circuit’s clear and convincing standard. i4i noted that Congress has been actively paying attention to and revising the Patent Act with an eye toward helping ensure quality patents, but so far, there has been no Congressional effort to legislate away from the clear and convincing standard. i4i asserted that this inaction represents a tacit endorsement of the Federal Circuit’s approach.

Justice Breyer asked whether changes were needed at all for addressing “bad” patents. For example, he wondered whether the existing options of reexamination at the PTO, district court stays pending reexamination, and the ability to narrowly instruct juries on their findings (i.e., only the “brute facts” of what features were found in the prior art, leaving the ultimate question to the judge), could be sufficient such that further changes to the standard are unnecessary. Microsoft’s counsel noted that reexamination options are limited to certain kinds of validity challenges and cannot address other issues, such as the question of whether a patent satisfies the requirements under 35 U.S.C. § 112 for describing and enabling the claimed invention. It also noted that stays are not always granted, alluding to an argument from the briefs that noted that under the current practice, a court’s decision on the stay could determine the standard of proof of invalidity (preponderance at the PTO in a reexamination, but clear and convincing in a district court).

Justice Breyer also stated he was unsure as to which was the worse risk to take: the risk of being too strict on proving invalidity (in which case there is the risk of “undeserving” patents surviving litigation) or the risk of being too lenient on providing invalidity (in which case there is the risk of a “deserving” patent being unjustly found to be invalid). i4i’s counsel asserted that the latter risk is much greater than the former because a district court finding of invalidity collaterally estops the patentee from any further assertions, while a district court finding of validity leaves the patent open to further validity challenges. The deputy solicitor general also argued that because the patent system represents a bargain between the inventor and the public, and the inventor has already performed his/her end of the bargain by coming forward and describing the invention in an application, then the inventor deserves a bit of credit, and the former risk would be the better one to take.

It is difficult to predict an outcome from the justice’s questions and discussion, but from the attendance today and the dozens of amici briefs that were filed in this case, it is clear that much of the patent community will be eagerly awaiting the Supreme Court’s decision, which should arrive by this summer.

Keywords: litigation, intellectual property, Supreme Court, validity

— Steve S. Chang, Banner & Witcoff, Ltd.


April 4, 2011

Federal Circuit Discusses Jurisdiction in DNA case

On April 4, 2011, before a filled courtroom, the Court of Appeals for the Federal Circuit heard arguments in the Myriad case. The case could potentially reach the issue of subject matter patentability of claims to isolated DNA under Section 101 of the patent statute.

Before reaching the merits of the arguments, however, there was an in-depth inquiry into the critical procedural question: Did the district court have jurisdiction to hear the case? In particular, did the plaintiffs demonstrate that they had standing to sue?

The Association for Molecular Pathology (AMP) urged that several individuals and groups had demonstrated sufficient likelihood of injury to confer standing. The panel appeared skeptical, however, that there was enough evidence of particularized harm for any one of the plaintiffs. The panel also expressed concern that if it found standing on the facts before them in this case, a whole new category of litigants would be created to challenge existing patents.

Turning to the merits, the panel appeared skeptical of the arguments of both the U.S. government as represented by the Department of Justice and of the large group of plaintiffs, which Judge Lourie referred to as a large “et al.” The panel’s questioning indicated that the theories of the plaintiffs and the government ran contrary to established case law on chemical entities in general, as well as contrary to longstanding U.S. Patent and Trademark Office policy on nucleic acids.

The judges struggled to identify a way to differentiate between genomic DNA and isolated DNA, spending several minutes debating with counsel whether there was a difference between mining a metal stuck in a rock and processing it to obtain the pure metal versus isolating the DNA from a cell and purifying a gene from a genome. The Department of Justice urged using a “magical microscope” as a helpful analytic tool. If such a microscope could see into the human body and determine that the claimed invention was present, then it would be a product of nature and not patent-eligible. AMP posited a pair of tweezers to be invented in the future that could pluck genes out of a genome. The judges maintained their focus on whether chemical bonds are formed or broken as the touchstone for whether a product is a product of nature or a product of human intervention. Judge Lourie commented, “This isn’t just research by tweezers.”

Overall, the judges appeared concerned about creating a sweeping change that would undermine the settled expectations of the biotech industry. Such a sweeping change as was urged by AMP, Judge Moore suggested, should be the province of Congress and not of either the judiciary or the executive branch.

Keywords: litigation, intellectual property, Federal Circuit, jurisdiction, DNA

— Fraser D. Brown, Sarah A. Kagan, and Paul M. Rivard, Banner & Witcoff, Ltd.


March 16, 2011

Federal Circuit Makes It Harder to Claim False Marking

In In re BP Lubricants USA, Inc., Misc. No. 10-906 (Fed. Cir. Mar. 15, 2011), the Federal Circuit held that “Rule 9(b)’s particularity requirement applies to false marking claims and that a complaint alleging false marking is insufficient when it only asserts conclusory allegations that a defendant is a ‘sophisticated company’ and ‘knew or should have known’ that the patent expired.” Slip op. at 2. The question now will be whether potential false-marking plaintiffs can meet this higher pleading standard and whether this decision might result in a significant reduction in the number of new false-marking actions.

The court looked to another qui tam statute, the False Claims Act, for guidance, noting that “false claims complaints must meet the requirements of Rule 9(b) because the False Claims Act condemns fraud ‘but not negligent errors or omissions.’”

In view of Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009), “a complaint must in the § 292 context provide some objective indication to reasonably infer that the defendant was aware that the patent expired.” The original complaint did not meet this standard because it contained “only generalized allegations rather than specific underlying facts from which we can reasonably infer the requisite intent.”

Keywords: litigation, intellectual property, Federal Circuit, false marking, False Claims Act

— Chad S.C. Stover, Connolly Bove Lodge & Hutz, LLP, Wilmington, Delaware


March 7, 2011

Ninth Circuit Case Highlights Risks of Naked Licenses

The Ninth Circuit recently highlighted the severe risks faced by trademark owners who enter into a license agreement without including appropriate provisions for quality control. If a trademark license does not provide for appropriate control over a licensee’s use of a trademark, a court may deem the license to be a “naked license,” resulting in a loss of trademark rights. See FreecycleSunnyvale v. The Freecycle Network, 626 F.3d 509 (9th Cir. 2010).

This decision is a useful reminder of the risks faced by trademark owners when licensing trademarks. The issue is not often litigated. See id. at 515 (the issue of “naked licensing” “has seldom arisen in this circuit or in our sister circuits”). Without express provisions for quality control and the actual exercise of quality control, trademark owners may unknowingly risk their trademark rights.

Keywords: litigation, intellectual property, naked license, Ninth Circuit

—Joseph G. Adams, Snell & Wilmer, LLP.


March 1, 2011

Supreme Court Hears Arguments in Stanford v. Roche

On February 28, 2011, the U.S. Supreme Court heard oral arguments in Stanford v. Roche Molecular Systems, Inc. At issue in this case is whether an inventor of an invention that arose from federally sponsored research has the right to separately assign rights to the invention or if ownership of those rights is automatically determined by the Bayh-Dole Act, 35 U.S.C. § 200.

The Bayh-Dole Act was enacted by Congress in 1980 to promote the commercialization of inventions that arise from federally sponsored research. Prior to the act, the government owned many patents on such inventions but did not do an effective job of commercializing them, and the sponsors of the act sought to nurture and commercialize further innovation. Under the act, the government has the right to take title to federally supported inventions under certain circumstances, with contractor universities and inventors having secondary (and tertiary) rights to retain ownership if the government does not elect to take title. Id., § 202(a), (b), and (d).

During oral arguments, the counsel for Stanford argued that the Bayh-Dole Act should be interpreted as a vesting statute in which ownership of federally sponsored inventions automatically vests according to the act’s hierarchy (government, then contractor, then inventor). According to Stanford, the Federal Circuit’s decision turns this hierarchy upside down, frustrating the act’s purpose. Stanford also argued that by giving the inventors this right of first refusal, the predictability in the research industry would be eroded as one can no longer be certain whether ownership is trumped by a “hidden” agreement like the Cetus Visitor's Confidentiality Agreement (VCA). Stanford also cautioned that under the Federal Circuit’s reading, contracting universities and inventors can easily contract around the Bayh-Dole Act’s provisions and cut the government out of the patent rights by simply agreeing to let the inventors retain title to the patents.

The U.S. deputy solicitor general supported Stanford’s position, arguing that the act’s framework provided a clear disposition of the patent rights and that ownership of patents is already subject to situations in which assignments are not necessary (referring to the ability of an assignee to take action on a patent application if an inventor refuses or is unavailable to execute an assignment and to the existence of other vesting statutes in which patent rights automatically revert to the government).

Roche asserted that the need for an assignment is fundamental U.S. patent practice and that there is nothing in the act’s language or history to indicate that Congress had intended to alter the assignment requirements for federally funded inventions. Roche argued that there are already other avenues of recourse for inventors who assign away rights in contravention of an earlier obligation (e.g., a court order requiring reassignment) such that there is no need to interpret the act as a vesting statute, and that the Federal Circuit properly resolved the matter on the basis of executed assignments.

Questions from the justices suggest a concern for disturbing the traditional requirement for an assignment. Justice Scalia noted that vesting without an assignment would be a significant change from traditional patent practice, Justice Sotomayor wondered why an assignment should not be needed here when it is generally required for other transfers of ownership, and Justice Alito remarked that the historical notion that patent rights originate with the inventor was one of his primary concerns he had with Stanford’s position. The counsel for Stanford responded by noting that the concept of automatic vesting is already used elsewhere in the laws, that its inclusion here would not be such a drastic change, and that it would be necessary to carry out Congress’s intent in passing the act. Roche’s position was to agree that automatic vesting would be a dramatic change and to note that other vesting statutes were clearer on their face that rights were to automatically transfer.

Several Justices asked about options that would avoid the need for automatic vesting, Justice Roberts asked whether the government can simply require contractors to secure assignments from their employees, and Justice Scalia agreed that the government could simply withhold funding if there was a problem getting the assignment. Justice Alito asked what other universities have been doing all this time, and the counsel for Stanford remarked that other universities generally also have policies requiring employees to sign assignments.

Justice Breyer appeared to favor the option of still requiring an assignment but deeming certain assignments void as against public policy in situations where the inventor fails to honor a prior obligation to assign to a Bayh-Dole contractor. This would allow the rights to be disposed in accordance with the act, but without reading the act as an automatic vesting act. Justice Kennedy also appeared to like this approach, asking the counsel for Stanford if this argument had been preserved.

Justices Ginsberg and Kennedy also appeared interested in resolving the matter on contract grounds. Justice Ginsberg remarked that the case appeared to turn on the fact that the Cetus VCA was an actual assignment (“hereby assign”), whereas the earlier-executed Stanford CPA was merely a promise to assign (“will assign”), making the Cetus VCA the first actual assignment. Justice Kennedy agreed that resolving the issue on this contractual basis appeared simpler.

Justice Kagan asked why the act did not expressly address the execution of assignments from inventors, as that appeared to be a huge omission in an act that dealt with ownership of patents. The counsel for Roche responded that, at the time the act was passed, there was no need to separately mandate that in the legislation, as universities had already proven to be well-suited to extracting the necessary assignments from their employees, and the laws had provisions for dealing with employees who refused to execute assignments. According to Roche, the focus of the act was on the relationship between the government and the contractor, not on the relationship between the contractor and its employees.

The questions from the bench suggest that the justices are hesitant to read the Bayh-Dole Act as a vesting statute. However, this hesitance does not automatically mean a win for Roche, as the justices may well change their mind, and they also appeared willing to consider alternative grounds.

Keywords: litigation, intellectual property, Bayh-Dole Act, ownership, Supreme Court

—Steve S. Chang, Banner & Witcoff, Ltd.


February 28, 2011

Supreme Court Hears Arguments in Global-Tech Case

On February 23, 2011, the U.S. Supreme Court heard oral arguments in Global-Tech Appliances Inc. and Pentalpha Enterprises, Ltd. v. SEB S.A. At issue in this case is whether liability for inducing patent infringement requires the defendant to have actual knowledge of the patent or whether under some circumstances a defendant may be charged with constructive knowledge of the patent.

During oral arguments, counsel for the petitioner, Global-Tech, argued the purpose of 35 U.S.C. § 271(b) is to punish third parties who know their actions will cause infringement and that the third party must have the purpose of causing the underlying offense of infringement. Counsel urged that the Federal Circuit’s test of “deliberate indifference” went too far. Not only does the Federal Circuit test not require actual knowledge of the patent, according to counsel, but it is even more broad than the traditional standard for willful blindness—which would require that a party act in disregard of a high probability of the existence of a patent.

Counsel for SEB argued that the central objective of 35 U.S.C. § 271(b) is to separate bad actors from those engaging in innocent business activities. SEB argued that although the Federal Circuit couched its decision in terms of “deliberate indifference,” the argument presented to the jury was effectively one of willful blindness, and the jury was instructed to find liability if Global-Tech actively and knowingly aided and abetted infringement.

Several questions from the justices inquired into whether the Court should adopt the same knowledge requirement for inducement under 35 U.S.C. § 271(b) that is used in the context of contributory infringement under 35 U.S.C. § 271(c). Both sides appeared to agree that the sections have different objectives and different requirement for knowledge of the patent. Counsel for Global-Tech argued that inducement has an even higher standard than contributory infringement for knowledge and intent, while counsel for SEB urged that inducement should not require that the defendant have actual knowledge of the patent when there are other indicia establishing culpable conduct.

Justice Breyer expressed concern that a constructive knowledge standard not based on willful blindness could introduce uncertainty and have far-reaching consequences, as there is almost always some risk of patent infringement when a company brings a product to market. Justice Kennedy likewise appeared concerned that creating a “duty to inquire” could impose a heavy burden on businesses, especially those supplying staple goods or raw materials used in many different products.

While the case at hand involves deep fryers, the Court was not unmindful of the implications its decision will have in other industries—most notably electronics, where tens and even hundreds of thousands of patents can come into play for a new product. Laughter erupted from the audience when Justice Alito informed counsel that the Court would not fashion a special rule for the deep fryer industry.

Counsel for SEB offered three possible approaches to the standard for inducing infringement that the Court could adopt. The first approach would be to implement the standard announced in Metro-Goldwynn-Mayer Studios, Inc. v. Grokster, Ltd., which dealt with the inducement of copyright infringement. Under Grokster, inducement can be established by showing “clear expression or other affirmative steps taken to foster infringement,” even in the absence of actual knowledge of specific copyrights. The second approach is one of willful blindness, which would require the defendant to act in disregard of a high probability of the existence of a patent. The third approach offered by SEB would be to require a defendant who copies a commercial product to investigate whether that product is covered by a patent.

It is difficult to predict how the Court will rule, but several of the Justices appeared concerned that an actual knowledge requirement was too narrow and would effectively encourage willful blindness. At the same time, the Court seemed sensitive to the need to tread carefully because its decision will have an even greater impact in other industries, particularly those that have dense patent landscapes.

Keywords: litigation, intellectual property, Supreme Court, inducing patent infringement

— Paul Rivard, Banner & Witcoff, Ltd.


February 9, 2011

Federal Circuit Rules Against 25 Percent Rule

In patent cases, the infringer of a valid patent is liable to the patentee for damages that shall “in no event [be] less than a reasonable royalty.” A reasonable royalty is the royalty rate to which two hypothetical, arms-length parties would agree after a negotiation. One common method of quantifying this hypothetical negotiation has been to use the 25 percent rule of thumb, which assumes a 25 percent royalty rate as a starting point for the hypothetical negotiations.

In Uniloc USA, Inc. v. Microsoft Corp., a three-judge panel of judges, including Judge Linn, Rader, and Moore, with Judge Linn writing the opinion, held that the 25 Percent Rule “is a fundamentally flawed tool for determining a baseline royalty rate . . . [and] is thus inadmissible under Daubert and the Federal Rules of Evidence.” No. 2010-1035, -1055, slip op. at 41 (Fed. Cir. Jan. 4, 2011). According to the court, the 25 Percent Rule is so flawed that even if the 25 percent base is adjusted for legitimate, case-specific factual considerations, the end result is still fundamentally flawed. Id. at 46.

The court reasoned that the 25 Percent Rule—which assigns a 25 percent royalty rate to any transaction regardless of the value of the technology or the strength of the intellectual property—failed to satisfy the “fundamental requirement” for expert testimony regarding royalties to have a “basis in fact to associate the royalty rate[] . . . to the particular hypothetical negotiation in the case.” Id. at 45. Although the court provided some discussion of the types of hypothetical starting points that were not robust enough to satisfy the court’s new requirements, it provided little insight as to acceptable starting points for calculating reasonable hypothetical royalty rates.

In light of Uniloc, damages experts in patent cases will be required to provide a more detailed damages analysis that will likely result in more discovery and greater expense to the client. Uniloc emphasizes the Federal Circuit’s trend regarding expert testimony in general—to survive a Daubert challenge, expert reports must be tied to the specific facts of the case.

— Daniel M. Attaway, Connolly Bove Lodge & Hutz, LLP, Wilmington, Delaware


January 31, 2011

Notable Decisions in Patent Law in 2010

With the start of the first quarter of 2011 in full swing, be sure that you are up to date on 2010’s notable developments in patent law. Click here to read a comprehensive summary of the notable court decisions issued from December 2009 to December 2010.

— Bradley C. Wright, Banner & Witcoff, Ltd.


January 12, 2011

Federal Circuit Reverses District Court Decision in Prometheus Case

On December 17, 2010, the Court of Appeals for the Federal Circuit (CAFC) issued a decision in Prometheus Laboratories, Inc. v. Mayo Collaborative Services. This case was remanded to the CAFC from the Supreme Court for further consideration in light of the Court’s decision in Bilski v. Kappos. Following the remand, the CAFC affirmed its original decision in the case, reversing a district court decision that found Prometheus’s diagnostic method to be patent-ineligible. The Federal Circuit once again ruled that Prometheus’s diagnostic method is patent-eligible subject matter under 35 USC § 101.

Jason S. Shull, Banner & Witcoff, Ltd.


January 12, 2011

Supreme Court Decides Costco v. Omega

On December 13, 2010, the Supreme Court issued its highly anticipated decision in Costco v. Omega, but the decision was probably not what most were anticipating. In a one-line per curiam affirmance, the Court ruled that “[t]he judgment is affirmed by an equally divided Court” (Justice Kagan recused herself from hearing the case).

The affirmance means that Omega’s extraterritorial sale of its watches did not exhaust its U.S. copyright in the same watches, so Costco cannot successfully defend against Omega’s copyright infringement claims on exhaustion grounds.

Jason S. Shull, Banner & Witcoff, Ltd.


October 14, 2010

Supreme Court Grants Writ of Certiorari in Global-Tech v. SEB

On October 12, 2010, the Supreme Court granted writ of certiorari in Global-Tech v. SEB to decide the level of intent required for inducing infringement under 35 U.S.C. § 271(b).

Section 271(b) says, “Whoever actively induces infringement of a patent shall be liable as an infringer.” Federal courts have struggled to define the level of intent necessary to satisfy the statutory guidelines.

The issue to be decided by the Supreme Court in Global-Tech v. SEB is whether the legal standard for the “state of mind” element of a claim for actively inducing infringement under § 271(b) is “deliberate indifference of a known risk” that an infringement may occur or instead “purposeful, culpable expression and conduct” to encourage an infringement.

The Federal Circuit’s decision can be found at the court’s website. The briefs filed with the Supreme Court can be found using the following links:

Jason S. Shull, Banner & Witcoff, Ltd.


September 17, 2010

Federal Circuit Passes Up an Opportunity to Curb False Marking

The ever-evolving area of false patent marking litigation under 35 U.S.C. § 292 took its next step as the Court of Appeals for the Federal Circuit passed on an opportunity to undo damage done by way of its decisions in Clontech Labs., Inc. v. Invitrogen Corp. and Forest Group v. Bon Tool Co. for the second time. It upheld the standing of a disinterested qui tam plaintiff to bring suit under 35 U.S.C. § 292 for false patent marking without alleging any concrete injury in fact. Stauffer v. Brooks Bros., Inc., ___ F.3d ___, 2009-1428, -1430, -1453 (Fed. Cir. Aug. 31, 2010).

The principle issue in Stauffer was whether, under the false marking statute, a third-party qui tam plaintiff has standing to bring suit without alleging a concrete injury in fact. In Stauffer, a third-party qui tam plaintiff sued Brooks Brothers, Inc. under § 292 for the false marking of expired patent numbers on bowties. See Stauffer v. Brooks Bros., Inc., 615 F.Supp.2d 248 (S.D.N.Y. 2009). Stauffer alleged only that Brooks Brothers knew that the patent numbers being marked were expired, and never alleged an injury to himself, to the United States, or to any particular person or industry. Id.at 254. The Southern District of New York held that Stauffer’s pleadings were insufficient to demonstrate standing. Id. The Federal Circuit held that by enacting § 292, Congress effectively created an injury in fact. Stauffer, 2009-1428 at p. 9. Per the court, this interest is assignable to “any person” under § 292, regardless of whether that person has suffered or indicated any injury to him- or herself, or any companies, industries, or entities. Id.

In making this holding, the Federal Circuit effectively turned down an opportunity to eradicate the current wave of false marking cases, which have been plaguing the U.S. court system since the Federal Circuit determined that false marking fines should be assessed on a “per article” basis as opposed to the previously used “per decision” basis in Forest Group v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009).

The Federal Circuit had already passed up one opportunity to curb the tide of false marking litigation in deciding the case of Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. June 10, 2010). One of the principle issues on appeal in that case was whether the mere marking of an expired patent number could be false marking under 35 U.S.C. § 292. A second principle issue was whether, to demonstrate “purposes of deceiving the public,” demonstration of knowledge of the false marking was enough, in light of the Federal Circuit’s 2005 opinion in Clontech Labs., Inc. v. Invitrogen Corp. Clontech seemingly established a rule whereby simply showing that the defendant knew of false marking was sufficient to meet the “purposes of deceiving” standard set forth in the statute. Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005). The Federal Circuit’s decision in Clontech, in combination with the Forest Group case, led to a drastic increase in the number of false marking litigations, with more than 300 false marking cases filed between December 2009 and the present. As most of the recently brought cases were based on the marking of expired patents, Pequignot was a chance for the Federal Circuit to greatly reduce the number of these cases. Instead, the Federal Circuit held that the marking of an expired patent number is false marking. Pequignot, 608 F.3d at 1362. Further, instead of completely overruling Clontech, the court did not disturb that case’s presumption of intent upon demonstration of knowledge. Id. at 1362–1363.

While the opinion of the court in Stauffer did little to stifle the current flow of false marking cases, two possible windows were left open for future challenges. The court cited to Ciba’s amicus brief and its argument that Section 292 fails under the “take care” clause of Article II of the Constitution, as the United States does not retain any control over resulting litigation under the false marking statute. Stauffer, 2009-1428 at p. 12. While acknowledging that Ciba raised “relevant points,” the court did not address the constitutionality of the false marking statute, as it was not an issue up on appeal. Id. The court also noted, in remanding the case back to the district court, that it was up to that court to determine the merits of Brooks Brothers’ motion to dismiss for failure to meet the heightened pleading requirements of Federal Rule of Civil Procedure 9(b). Id.at 14.

It may, however, ultimately be up to Congress to find a way to lessen the impact of the Federal Circuit’s recent decisions. Both houses of Congress have identical propositions. While the Senate proposal is incorporated into the overarching Patent Reform Act currently in a perpetual state of change, the House proposal is a standalone bill, H.R. 4954. See S.515 and H.R. 4954. Both of them eliminate the private enforcement of the false marking statute and allow for private parties to only recover damages, instead of half of the fine currently prescribed by the statute. As a result, both bills would effectively eradicate false marking complaints filed by disinterested third parties.

— Geoffrey A. Zelley, Connolly Bove Lodge & Hutz, LLP, Wilmington, Delaware


August 20, 2010

Federal Circuit Hears Case on False Patent Marking

The recently hot area of false patent marking was again on the docket at the Federal Circuit as Chief Judge Rader and Judges Lourie and Moore heard arguments in Stauffer v. Brooks Brothers, Inc. At issue was the fundamental question of who may bring a claim for false marking under section 292.

Based on the questions from the bench (bearing in mind, of course, the usual caveats about not reading too much into oral argument), it appeared likely that the court would reverse and hold that a plaintiff need not show an injury-in-fact to competition or the government to maintain standing.

Raymond Stauffer, a patent attorney appearing prose, kicked off the argument by citing the statutory language permitting “any person” to bring suit. The panel identified this as Stauffer’s best argument for reversing the district court’s dismissal of his complaint. Stauffer’s argument received backing from the government, which had been permitted leave to intervene in the appeal.

Stephen Baker, appearing for Brooks Brothers, focused on the district court’s finding that Brooks Brothers was not the “marker” of the product at issue (bow ties) because another company made the labels, and argued that the court could simply rely on this factual finding in holding that Stauffer lacked standing. The panel’s questioning seemed to indicate that they may view that particular fact as relating to the merits rather than standing.

The Federal Circuit’s opinion, which is expected within the next 90 days, is likely to have implications on the hundreds of false marking cases brought since the court’s Forest Group, Inc. v. Bon Tool Co. decision last December.

Bill Sigler, Kaye Scholer, LLP


April 28 , 2010

The Federal Circuit Takes Inequitable Conduct Case for En Banc Review

The Federal Circuit granted rehearing en banc in Therasense v. Beckton, Dickinson, & Co. The court asked the parties to brief the following issues:

  1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
  2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
  3. What is the proper standard for materiality? What role should the U.S. Patent and Trademark Office’s (PTO) rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims wouldn’t have issued?
  4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
  5. Should the balancing inquiry (balancing materiality and intent) be abandoned?
  6. Do the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context?

A copy of the order granting rehearing en banc can be found here.

Jason Shull, Banner & Witcoff, Ltd.


March 24 , 2010

Federal Circuit Reaffirms 35 U.S.C. 112

On March 22, 2010, the U.S. Court of Appeals for the Federal Circuit issued its en banc decision in Ariad v. Eli Lilly, reaffirming that 35 U.S.C. § 112, ¶1 contains a written description requirement separate from an enablement requirement. The court ruled that claims to a method of treating diseases by regulating a protein in human cells were invalid for lack of written description.

The question of whether a claimed invention is adequately described in a specification often arises when claims are amended or presented after a patent application is filed. The question may also arise, as it did in Ariad, in the context of originally filed claims. As the court noted, questions of this latter type are “particularly acute in the biological arts,” where claims often identify a function or result while the specification may not recite sufficient materials to accomplish that function or result.

Prior to the rehearing en banc, the Federal Circuit panel of three of its judges held the specification did not demonstrate that the inventors “possessed” the invention by “sufficiently disclosing molecules capable of reducing [protein] activity.” The panel determined the patent contains no working examples, or even “prophetic” examples, of reducing protein activity, or a description of the synthesis of hypothetical molecules that could be used for this purpose. The panel noted the patentee “chose to assert claims that are broad far beyond the scope of the disclosure provided in the specification.”

Though agreeing with the panel’s conclusion, the en banc court acknowledged that “[t]he term ‘possession’ . . . has never been very enlightening.” The court emphasized that the inquiry must focus on “the four corners of the specification from the perspective of a person of ordinary skill in the art” and that “the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.”

Much of the opinion focused on the statutory language and whether Supreme Court precedent had recognized a separate written description requirement. The court found it significant that the language of the statute was not significantly changed from that in existence prior to the 1836 Act, which required claims for the first time. In other words, the statutory requirement for claims did not replace the statutory requirement that the specification contain a written description of the invention. Also, as recently as in Festo, the Supreme Court reiterated that § 112, first paragraph requires that the specification “describe, enable, and set forth the best mode.”

The case attracted several amici curiae, some of whom argued that the court’s written description jurisprudence amounts to a “super enablement” standard for chemical and biotechnology inventions. The Federal Circuit rejected this argument, explaining that this “doctrine never created a heightened requirement to provide a nucleotide-by-nucleotide recitation of the entire genus of claimed genetic material; it has always expressly permitted the disclosure of structural features common to the members of the genus.”

The court reasoned that the written description requirement also serves the policy goal of maintaining a balance in the quid pro quo of granting exclusive patent rights in exchange for public disclosure of the invention. The Federal Circuit seemed particularly concerned with patents imposing additional costs on downstream research and discouraging further invention. The court was not persuaded that maintaining the separate written description requirement would adversely impact the pace of innovation or the number of patents obtained by universities.

Judges Linn and Rader filed dissenting opinions, arguing that the statute does not contain a written description requirement separate from the enablement requirement.

Paul Rivard, Banner & Witcoff, Ltd.


March 4 , 2010

Federal Circuit and Eastern District of Texas Judges to Speak on Claim Construction at Section Annual Conference

Chief Judge Paul Michel of the Federal Circuit and Judge Chad Everingham of the Eastern District of Texas have committed to participate on the panel for the program "Winning Your Patent Infringement Case at Claim Construction" at the Section Annual Conference in New York City. The panel will also include Clinton Hallman Jr., chief counsel for Intellectual Property of Kraft Foods Inc. and the moderator, Alan M. Fisch, cochair of Kaye Scholer LLP's Patent Litigation Group.

Chief Judge Michel, Judge Everingham, and the other panelists will offer their thoughts on many of the key strategic issues relating to Markman hearings, including

  • the timing of claim construction hearings
  • issues inherent to multi-party litigation
  • using special masters, expert testimony, and technology tutorials
  • referring to the accused product and the prior art at claim construction
  • case disposition at or shortly after the claim construction hearing

The program thus will provide members with insights on winning strategies for the claim construction process from a 22-year member of the Federal Circuit bench, a trial judge in one of the hottest jurisdictions in the United States for patent litigation, in-house intellectual property counsel for a Fortune 100 company, and a prominent patent litigator who has presented at scores of claim construction hearings.

Registration for the program, which is scheduled for April 23, 2010 at 11:15 a.m., is available at www.abanet.org/litigation/sectionannual.


March 4, 2010

Keep It Simple: Presenting IP Cases To A Jury

Intellectual Property trials, as much or even more so than any other type of trial, require presenting complicated concepts and issues to juries in as straightforward and persuasive a manner as possible. But it’s surprisingly difficult to come up with effective ways to communicate with juries.

The Intellectual Property Litigation Committee invites you to participate in the “Keep It Simple: Presenting IP Cases to a Jury” CLE program at the upcoming 2010 Litigation Section Annual Conference in New York City. The program will take place on Friday, April 23, 2010, from 4:00–5:15 p.m. at the Hilton New York, and will feature a distinguished panel of trial experts, including a renowned United States District Court Judge, who will discuss how to present complex issues to a jury; Honorable Joseph J. Farnan Jr., United States District Court for the District of Delaware; Samuel F. Baxter from McKool Smith, P.C.; Leora Ben-Ami from Kaye Scholer LLP; Ahmed J. Davis from Fish & Richardson P.C.; and Philip K. Anthony, Ph.D., Chief Executive Officer of Decision Quest.

This program will discuss trial strategies for presenting complex topics to a jury in a straightforward, persuasive manner to empower the jury and build credibility through education by using simple language, visual aids, teaching techniques, and story telling. The program will include sample opening and closing arguments, witness examinations demonstrating the importance of using simple terms that jurors can understand, and the use of visual aids, experts, and the “Four Cs” (clarity, conciseness, consistency and creativity), all for the purpose of empowering the jury and building credibility through education


March 4, 2010

Hot Topics in Intellectual Property

The field of intellectual property is constantly changing, making it imperative for IP litigators to keep up-to-date on the most recent changes in the law as well as best practices and strategies.

The Intellectual Property Litigation Committee invites you to participate in the “Hot Topics in Intellectual Property” CLE program at the upcoming 2010 Litigation Section Annual Conference in New York City. The program will take place on Friday, April 23, 2010, from 2:30–3:45 pm at the Hilton New York, and will feature a distinguished panel of experts addressing the hot issues in each of the four main IP practice areas, including Andrew P. Bridges (Copyright Law), Victoria A. Cundiff (Trade Secrets Law), Christopher A. Hughes (Patent Law), and Susan Progoff (Trademark Law).

The Copyright Law portion of the program will cover recent developments on fair use, particularly as to news aggregation and searching, secondary liability in copyright law, DMCA safe harbors, and statutory damages. The Trade Secrets Law portion of the program will address a number of current issues, including the increasing importance courts place on specifically identifying the trade secrets at issue early on in a case, proving irreparable injury in trade secrets cases, and the need for clear evidence of imminent risk to support claims of “inevitable” or “threatened” disclosure of trade secrets. 

The Patent Law portion of the program will cover recent developments in patent damages law, including Federal Circuit decisions on ongoing royalties (Paice v. Toyota), comparable licenses and the entire market value rule (Lucent v. Gateway), and patent reform proposals currently before Congress.  Recent cases dealing with the interaction between patent licensing and bankruptcy law will also be discussed. The Trademark Law portion of the program will cover a number of recent trademark cases of relevance to trademark litigators. The program will also feature a discussion of similarities between the four practice areas and what litigators in one area can learn from developments in the others.


February 16 , 2010

Developments in Patent Law 2009

A year end review and summary of the important patent law decisions for 2009 is now available.

Bradley Wright, Banner & Witcoff, Ltd.


February 16 , 2010

Federal Circuit Vacates Damages Award for District Court's Improper Reliance on Licenses

On February 5, 2010, the Federal Circuit vacated a damages award for infringement on the basis that plaintiff’s expert relied on existing licenses that were not linked to the patent-in-suit. In ResQNet.com v. Lansa, Inc., plaintiff’s expert relied on the first factor of Georgia-Pacific to arrive at 12.5 percent of defendant’s revenues for the sale of infringing software as a reasonable royalty rate. According to the majority’s opinion, authored by Judges Newman, Lourie, and Rader, plaintiff’s expert reached the 12.5 percent royalty rate by relying on existing patent licenses that did not mention the patents-in-suit or show any discernible link to the claimed technology. Citing its 2009 decision in Lucent Techs., Inc. v. Gateway, the federal circuit determined that the expert’s reliance on these licenses was improper because “the first Georgia-Pacific factor considers only past and present licenses to the actual patent and the actual claims in litigation.” Vacating the damages award, the majority determined that the expert relied on “speculative and unreliable evidence divorced from proof of economic harm linked to the claimed invention.” The Federal Circuit’s full opinion can be found here.

Jason Shull, Banner & Witcoff, Ltd.


January 8, 2010

Federal Circuit Holds that PTO Has Been Shortchanging on Patent Term Adjustments

Owners of patents that issued more than three years after filing should check to see if they are entitled to a greater patent term adjustment than was calculated by the Patent and Trademark Office (PTO) at the time of issuance. On January 7, 2010, the Federal Circuit held that the PTO has been misinterpreting the patent term adjustment statute, 35 U.S.C. § 154. Wyeth v. Kappos, Appeal No. 09-1120, aff’g, Wyeth v. Dudas, 580 F. Supp. 2d 138 (D.D.C. 2008). A copy of the Federal Circuit opinion can be found here.

The adjustment statute provides guarantees of patent term by providing adjustments due to periods of delay by the PTO. A patent is entitled to a one-day extension of its term for every day that issuance of a patent is delayed by a failure of the PTO to comply with deadlines under § 154(b)(1)(A), e.g., the deadline of 14 months for a first office action. Delays of this type are called “A delays.” A patent is also entitled to a one-day extension for every day greater than three years after the filing date that it takes the patent to issue, with certain exclusions, under § 154(b)(1)(B). Delays of this second type are called “B delays.”

The extensions for A delays and B delays are subject to a limitation concerning “overlap”—that “[t]o the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this statute shall not exceed the actual number of days the issuance of the patent was delayed.” §154(b)(2)(A). The PTO has been granting adjustments for the greater of the A delays or the B delays but not A + B delays. In the PTO’s view, the entire period during which an application is pending is the “B period” for purposes of identifying “overlap.”

Robert Resis, Banner & Witcoff, Ltd.


December 17, 2009

Federal Circuit Shifts Its Declaratory Judgment Jurisprudence


Federal law provides businesses with the ability to sue a patent holder to obtain a declaratory judgment that their products are not infringing the patent holder’s patent. The ability to bring these declaratory judgment suits is important to many businesses, especially to those businesses that receive threats from patent holders that can be classified as “patent holding companies,” “non-practicing entities” or “patent trolls.” The freedom to sue, however, is not absolute. Rather, it is limited by a jurisdictional bar. In its most recent decision on the subject, Hewlett-Packard Co. v. Acceleron LLC, No. 2009-1283, __ F.3d __, 2009 WL 4432580 (Fed. Cir. Dec. 4, 2009) (Acceleron), the Federal Circuit arguably lowered that bar—at least in cases wherein the patent holder is a holding company. In doing so, the court explained that its decision “marks a shift from past declaratory judgment cases.”

Declaratory Judgment Generally

Under the Declaratory Judgment Act, “any court of the United States . . . may declare the rights and other legal relations of any interested party seeking such declaration” where there exists “a case of actual controversy.” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126 (2007) (citing 28 U.S.C. § 2201(a)). In the patent litigation context, a declaratory judgment action typically arises where a potential patent infringer brings suit against the relevant patent holder seeking a declaration of non-infringement or patent invalidity. The potential patent infringer, however, cannot simply file a lawsuit out of the blue. Rather, before a potential infringer can enter the doors to the courthouse, there must be a “definite and concrete” dispute between the parties. In other words, there must be “a case of actual controversy.”

In MedImmune, the Supreme Court acknowledged that there is no bright-line rule for distinguishing cases that satisfy the actual controversy requirement and those that do not. Id. According to the Court, “the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient reality to warrant the issuance of a declaratory judgment.” Id. (emphasis added).

The Federal Circuit’s Decision in Acceleron

In Acceleron, the Federal Circuit applied the Supreme Court’s “all the circumstances” test and reversed the district court’s dismissal of the plaintiff’s declaratory judgment suit. In doing so, the court first detailed “all the circumstances” that lead to the plaintiff, Hewlett-Packard Company (HP), filing its declaratory judgment suit against the defendant, Acceleron LLC (Acceleron).

To that end, the court explained that Acceleron is a patent holding company that had acquired ownership of the patent at issue on May 31, 2007. Less than four months later, Acceleron wrote to HP “to call [HP’s] attention to the [patent at issue],” to inform HP that the patent at issue related to Blade Servers—a product sold by HP—and to inform HP that Acceleron would expect a response in two weeks. In response, HP’s litigation counsel wrote back to Acceleron stating that HP wanted more information from Acceleron and that HP wanted both companies to agree to refrain from taking any legal action for a period of 120 days. Four days later, Acceleron wrote back to HP explaining that Acceleron did not believe there was any basis for HP to file a declaratory judgment action, that Acceleron would not promise to refrain from filing suit, and that Acceleron would give HP two weeks in which to respond.

Two weeks later, HP filed a declaratory judgment suit against Acceleron in the District of Delaware, seeking a declaratory judgment of non-infringement and invalidity of the patent at issue. The district court dismissed the case, however, finding that, at the time HP filed suit, the potential for litigation was still “too speculative a prospect to support declaratory judgment jurisdiction.”

On appeal, the Federal Circuit disagreed and reversed. Acceleron, 2009 WL 4432580, at *5. After explaining that MedImmune had lowered the bar for determining declaratory judgment jurisdiction, the court cautioned that nevertheless, “a communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties, let alone the existence of a ‘definite and concrete’ dispute.” Id. at *2. According to the court, “[m]ore is required to establish declaratory judgment jurisdiction.” Id.

Given this statement, one might have expected the court to have adopted Acceleron’s argument that because Acceleron never explicitly asserted its rights under the patent at issue in correspondence with HP—by way of, for example, threatening to sue for infringement or demanding a license—there was simply no controversy to support HP’s suit. The court, however, rejected this argument.

The court explained that the test for declaratory judgment jurisdiction in patent cases is objective and that the “purpose of a declaratory judgment action cannot be defeated simply by the stratagem of a correspondence that avoids the magic words such as ‘litigation’ or ‘infringement.’” Id. at *3–4. The court further observed that Acceleron was solely a licensing entity and that, unlike a practicing entity, only receives benefits from its patent through enforcement of that patent. Id. at *4. This, according to the court, added significance to the fact that Acceleron refused HP’s request to refrain from filing suit for 120 days. Id.

In the end, the court held that “[u]nder the totality of the circumstances . . . it was not unreasonable for HP to interpret Acceleron’s letters as implicitly asserting its rights under the [patent at issue],” and that “conduct that can be reasonably inferred as demonstrating intent to enforce a patent can create declaratory judgment jurisdiction.” Id. Thus, the court found that an actual controversy existed to support declaratory judgment jurisdiction. Id. at *5.


In light of the Federal Circuit’s decision in Acceleron, both inside and outside counsel should think twice before sending letters to another entity identifying their client’s patent and the other entity’s relevant product line. This is especially true if counsel represents a patent holding company. Under the totality of the circumstances, this type of letter—despite the lack of an explicit threat of litigation or infringement—may create the foundation for declaratory judgment jurisdiction.

On the other hand, inside and outside counsel receiving letters on behalf of their clients from patent holders—and especially patent holding companies—that contain an implicit assertion of rights under a patent against an identified product, may now feel more confident that if they file a declaratory judgment suit to protect their client, that suit will not be dismissed for lack of jurisdiction.

Timothy J. Rechtien, Banner & Witcoff, Ltd.


December 8, 2009

Federal Circuit Hears Oral Arguments in Ariad v. Eli Lilly on Written Description Requirement


It has been standard practice since the 1952 Patent Act for patent lawyers across all technology disciplines to include in patent applications an adequate written description to show that the inventors were in possession of the invention and a teaching of the skills needed in making and using the invention. Each of these separate aspects was commonly understood to be statutorily mandated by 35 U.S.C. § 112, ¶1. Likewise, failure to provide an adequate written description is a common defense to patent infringement allegations. If the patent fails to provide an adequate written description, the patent is invalid and therefore unenforceable.

On December 7, 2009, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, i.e., with all its 12 judges sitting as a group, heard oral arguments in Ariad v. Eli Lilly, a case that questions “whether 35 U.S.C. § 112, ¶1, contains a written description requirement separate from an enablement requirement” and, “if so, what is the scope and purpose of the written description requirement.” The Federal Circuit took up the question in the context of a method of treating diseases by regulating a protein in human cells. Although the invention is in the bio/pharma technology field, and specifically lowering the activity of a protein, the Federal Circuit’s decision in this case could cut across all technology fields.

Prior to the rehearing en banc, a Federal Circuit panel of three of its judges held that the specification did not demonstrate that the inventors “possessed” the invention by “sufficiently disclosing molecules capable of reducing [protein] activity.” The panel determined the patent contains no working examples, or even “prophetic” examples, of reducing protein activity, or a description of the synthesis of hypothetical molecules that could be used for this purpose. The panel noted the patentee “chose to assert claims that are broad far beyond the scope of the disclosure provided in the specification.”

The rehearing en banc has attracted some 25 amicus briefs, mostly supporting Ariad’s opposition to the separate written description requirement. Some amici characterized the requirement as a “super-enablement requirement” that is prejudicial to research universities and small biotechnology companies.

Although framed as a subsidiary issue by the court, much of the oral argument on December 7 focused on policy considerations underlying the written description requirement, as well as its historical treatment by the courts. Eli Lilly described the requirement as “corroboration” of what a particular inventor actually invented. In response to questions from Chief Judge-elect Rader on whether courts have previously limited the application of the requirement to first-to-invent disputes, Lilly maintained that the requirement should be available to challenge patent validity in whatever context the challenge may arise.

Ariad criticized the Federal Circuit’s “possession” requirement as lacking any support in the Patent Act. Ariad urged that the patent law requires only that the specification “identify” the invention and teach how to make and use it. According to Ariad, policy considerations are satisfied as long as persons skilled in the art are able to actually practice inventions based on the guidance provided in patent specifications, as he asserted was true in the specific case at issue. Ariad agreed, however, that a specification disclosing a single embodiment would not provide an adequate written description for a broad claim when other embodiments were inoperable.

The U.S. government, as amicus curie, argued that the court should maintain the separate written description requirement. The government explained the requirement is an important tool for patent examiners to reject excessively broad patent application claims during patent examination. In its brief, the government described the requirement as “crucial to” and “essential to the operation of” the patent system.

During the oral arguments, several of the judges seemed skeptical that the statute contains a written description requirement separate from the enablement requirement. Judge Moore, on the other hand, questioned whether stare decisis alone justified maintaining existing law. As all patents and patent applications are required to meet the statutory mandate of 35 U.S.C. § 112, ¶1, this case will be closely watched to see whether the Federal Circuit makes a sweeping change in how patent applications are obtained and enforced or whether the Federal Circuit will limit its decision to the narrow bio/pharma nature of the case.

Paul Rivard, Banner & Witcoff, Ltd.


November 18, 2009

Supreme Court Hears Argument in Bilski Case

The courtroom at the U.S. Supreme Court was overflowing with patent attorneys, many having waited in line for more than three hours to get in. Following the oral argument on November 9, 2009, in Bilski v. Kappos, one thing seems certain—Mr. Bilski is not likely to get a patent on his method of hedging consumption risk. Originally filed in 1997, the patent application had been rejected by the U.S. Patent and Trademark Office (PTO), a decision that was affirmed in 2008 by the U.S. Court of Appeals for the Federal Circuit. In affirming the decision, the Federal Circuit ruled that a process is not patentable unless it is either tied to a particular machine or transforms something tangible. Bilski’s claims did not meet either prong of this “machine or transformation” test.

The afternoon argument, which began promptly at 1:00 p.m., evoked numerous questions from the Court. None of the Justices seemed sympathetic to Bilski’s case. Several of the Justices pressed Bilski’s counsel to explain why a method of conducting business is the type of invention that was intended to be covered under the patent laws. The Justices struggled, however, with whether the Federal Circuit’s “machine or transformation” test was the appropriate test for process patents, and prodded both sides to propose alternatives.

Justice Scalia asked why the “useful arts” mentioned in the U.S. Constitution didn’t indicate an intention to limit inventions to manufacturing arts involving workers. Justice Ginsberg asked why, in view of Europe’s prohibition on patenting business methods, the United States should not adopt a similar rule. Justice Breyer asked whether the framers of the Constitution would have intended to force competitors to search for and avoid patents covering methods of doing business, and asked whether he could have patented his method of teaching antitrust law. (Bilski’s response: Yes, if it was new and not obvious). Justice Sotomayor seemed concerned that the “machine or transformation” test was too rigid and might foreclose patenting future areas of technology.

Chief Justice Roberts pressed Bilski’s counsel several times to explain why his three-step method involving “initiating transactions” among various parties was not merely an unpatentable abstract idea, and debated with Bilski’s counsel whether any of the steps involved physical steps. At one point, Chief Justice Roberts challenged Bilski’s counsel to explain why picking up the phone and calling somebody to sell a commodity involved anything “physical.” Justice Scalia asked why, if the framers of the Constitution intended to cover business methods, hadn’t inventors patented methods of training horses back in the early days of the country.

Bilski’s attorney argued that the test for patentability should focus on whether there was a practical application of a useful result, a test that was met by Bilski’s claims. He also argued that by enacting Section 273 of the patent statute, which provides a defense for infringement of “business method” patents, Congress clearly intended for business method inventions to be covered under the patent laws. The Justices seemed concerned that Bilski’s proposed test was overly broad.

After-Effects of State Street Bank
Several of the Justices asked whether the State Street Bank case—thought by some to have given rise to “business method” patents after it was decided in 1998—would have reached the same outcome today under the Federal Circuit’s “machine or transformation” test. Malcolm Stewart, arguing on behalf of the PTO, said that it would, given that State Street Bank involved only a claim to a machine, not any process claims, so the “machine or transformation” test would not be applicable. Some of the Justices seemed puzzled by this distinction, and pressed Stewart to explain why the test would not apply. It is unclear whether their concerns were adequately addressed.

Wrong Case for Supreme Court?
Justice Alito asked whether the Supreme Court should have agreed to hear the case at all, given that it could have been decided on the narrower grounds that Bilski was claiming an abstract idea. Mr. Stewart, arguing on behalf of the PTO, responded that the PTO wanted to win on the primary ground advanced—the “machine or transformation” test. He also defended that test as leaving some flexibility for future decisions. Deciding the case on the alternate ground would leave a hole in the law, he said, creating uncertainty for the PTO and patent applicants. The Supreme Court has not issued a decision on this issue for nearly 30 years.


In the end, the Supreme Court may adopt a variant of the Federal Circuit’s “machine or transformation” test that leaves open the possibility for patenting future forms of technology that would not satisfy the current Federal Circuit test. Or, as suggested by some of the Justices, it is possible the Court might affirm the decision on the alternative ground that Bilski’s process claims are a mere “abstract idea” and, therefore, precluded under existing Supreme Court precedent. What seems unlikely is that Bilski will end up with a patent on his method of hedging consumption risk.


Patent Rules Adopted by the Northern District of Illiniois Became Effective

On October 1, 2009, new local patent rules adopted by the Northern District of Illiniois became effective. The new local patent rules are now on the court’s website (NDIL website). A press release announcing the adoption of the new rules can be found here.

Importantly, Chief Judge Holderman of the Northern District indicated at a recent bar conference that these rules will affect pending cases. These patent rules are similar to those in the N.D. of California and the E.D. of Texas, but differ in two significant aspects: the N.D. of Illinois patent rules are designed to promote uniformity within the district, not speed (the estimated patent schedule under the new rules is about two years from service of the complaint to the case being ready for trial); and the parties opposing infringement open and close the Markman briefing, which in most cases will be toward the end of fact discovery (see LPR 4.1 through 4.3).


Federal Circuit Clarifies Patent Application Standard


The Federal Circuit has clarified that in patent application filings, to protect against double patenting rejections, patent applications must be true divisional applications—filed in response to restriction requirements. Continuation and continuation-in-part applications are not divisional applications. The court recognized that the Manual of Patent Examining Procedure (MPEP) states the United States Patent and Trademark Office (USPTO) might recognize a continuation application as a divisional application—but concluded this recognition does not justify departing from a strict application of the plain language of the patent law, insofar as it affords benefits to divisional applications.

The clarification came in Amgen v. Roche litigation over the recombinant anemia drug erythropoietin (EPO). This litigation has been going on since 2005 when Amgen filed a declaratory judgment action against Roche in the United States District Court for the District of Massachusetts, alleging that Roche’s product, Mircera, if imported into the United States, would infringe five of Amgen’s patents to EPO. Roche asserted that Amgen’s patents were invalid and not infringed. One of the defenses raised by Roche was obviousness-type double patenting of the asserted claims of the ’933, ’422, and ’349 patents over the claims of an earlier issued and now expired patent—U.S. Patent No. 4,703,008. 


Federal Circuit Rejects “Should Have Known” Standard for Proving Intent to Deceive in Trademark Fraud Cases

In re Bose Corp. (Appeal No. 2008-1448)

On August 31, 2009, the Federal Circuit overturned a decision by the USPTO’s Trademark Trial and Appeal Board (TTAB or Board) ordering cancellation of Bose’s WAVE trademark registration for fraud.

Bose filed a renewal application for the WAVE trademark claiming that the mark was in use in commerce on all of the goods recited in the registration—including audio tape recorders and players that were no longer being manufactured or sold by Bose. Instead, these goods were being repaired by Bose under warranty. Bose filed an opposition against an application for the HEXAWAVE trademark, and the applicant counterclaimed for cancellation of the BOSE registration due to fraud committed in the renewal application. The TTAB found that Bose had committed fraud in the renewal application by virtue of the false statement that the mark was in use in commerce with all of the goods and cancelled the WAVE registration.


Rescuecom Corp. v. Google, Inc., 2009 WL 875447

(2d Cir. Apr. 3, 2009)

Various courts have grappled with the issue of whether a search engine’s promotion/sale, or a competitor’ purchase, of a plaintiff’s trademark as a keyword ad trigger qualifies as a “use in commerce” under the Lanham Act. The vast majority of courts facing this issue have found such conduct constitutes “use in commerce.” Many had considered the Second Circuit to be the lone hold-out on the “use in commerce” debate based upon its 2005 decision in the 1-800 Contracts v. WhenU.com, Inc. 414 F.3d 400 (2d Cir. 2005) pop-up advertising case. In its recent decision in Rescuecom, however, the Second Circuit reversed the Rule 12(b)(6) dismissal on the “use in commerce” issue and found Rescuecom’s allegations of keyword infringement sufficient to move forward.


Supreme Court Grants Cert In Bilski Case

On June 1, 2009, the U.S. Supreme Court granted certiorari in an important patent case involving the patentability of business methods. The case, In re Bilski, originated in the U.S. Patent and Trademark Office (PTO) and was the subject of an en banc 2008 decision rendered by the U.S. Court of Appeals for the Federal Circuit. Bilski sought to patent a series of transactions between a commodity provider and market participants in a way that balanced risk. The PTO rejected the patent application on the basis that it was not a “process” as that term is understood in patent law.


House of Representatives Passes a Bill Establishing a Pilot Program for Patent Litigation

The U.S. House of Representatives recently passed a bill that would establish a pilot program designed to enhance the expertise of federal judges in patent cases and improve the efficiency of patent litigation in the federal courts by steering cases to more experienced judges. Under H.R. 628, passed on March 17, 2009 by a vote of 409 to 7, six district courts would be selected from those courts with the largest number of patent cases or that have adopted patent local rules.


Appellate Court Affirms Sanction for Violating Protective Order

John Hutchins, co-chair of the Intellectual Property Litigation Committee, discusses the impact of the Walls v. PHL Associates, Inc. decision on protective order issues in intellectual property cases, in the Litigation News article.


Patent Reform Update

April 30, 2009 – The House Committee on the Judiciary held a hearing on H.R. 1260. The video webcast of the hearing can be accessed here.

April 2, 2009 – The Patent Reform Act of 2009 (S.515) was placed on the Senate Legislative Calendar.  A redline of S.515 showing the April 2, 2009 amendments that were approved by the Senate Judiciary Committee can be accessed here [PDF].

March 6, 2009 – And their off... The Patent Reform Act of 2009 was introduced by the Senate and House Judiciary Committees early last week.  We will see if the third time is truly the charm.  Once again, damages, a first-to-file framework, and expanded reexamination provisions will figure prominently in the upcoming debate.  Notably, in its current form, the legislation does not address inequitable conduct.  Don't be left behind; S.515 and H.R.1260 are available for viewing at http://thomas.loc.gov.

February 26, 2009 – Senate Judiciary Committee Chairman Patrick Leahy recently relayed his intention to introduce a patent reform bill this year. As the patent reform debate heats back up, interested parties are starting to weigh in. Stay tuned for further developments.


Deep Linking: Everyone Does It, but Is It Legal?

By now, users of the World Wide Web are very familiar with the common practice of “deep linking,” which involves providing a link on one website to a specific page or content on another website by bypassing the other website’s home page or main page. Despite the ubiquity of this practice, however, there is still some controversy over its universal legality, as illustrated by two recently filed cases: GateHouse Media v. New York Times Company, and Jones Day v. BlockShopper LLC.


Federal Circuit Grants Mandamus Relief in In re TS Tech USA Corp. et al. for Refusal to Transfer Case from the Eastern District of Texas

On December 27, 2008, the U.S. Court of Appeals for the Federal Circuit issued its decision in In re TS Tech USA Corporation, TS Tech North America, Inc., and TS Tech Canada, Inc [PDF]. In this decision, the Federal Circuit held that the district court “clearly abused its discretion in denying transfer of venue [from the Eastern District of Texas] to the Southern District of Ohio.”


Major Victory for Open Source Software Industry

The remedies available to software licensors are often a make or break issue in litigation over rights to software. A federal court ruling on August 13, 2008 has expanded the scope of copyright infringement remedies for open source software licensors.


Court Limits Patents on Business Methods

On October 30, 2008, the U.S. Court of Appeals for the Federal Circuit issued a rare full-court opinion that may limit the ability of companies to obtain patents on methods of doing business. The appeal was from the U.S. Patent and Trademark Office (PTO), which had rejected Bernard Bilski’s patent application for a method of managing consumption risk. Bilski sought to patent a series of transactions between a commodity provider and market participants in a way that balanced risk. The PTO rejected the patent application on the basis that it was not a “process” as that term is understood in patent law. According to the PTO, in order to be patentable, a process must either be tied to a particular machine or it must transform something tangible. Because Bilski’s invention did neither, it did not meet the definition of a “process.”


Federal Circuit Determines That the "Point of Novelty" Test Should No Longer Be Used in Design Patent Infringement Cases

The Court of Appeals for the Federal Circuit, en banc, held in Egyptian Goddess v. Swisa, that the point of novelty test should no longer be used in the analysis for determining design patent infringement. In support of its decision, the Federal Circuit noted that the point of novelty test as a separate requirement is inconsistent with the ordinary observer test laid down in Gorham, is not mandated precedent, and is not needed to protect against unduly broad assertions of design patent rights.

The Federal Circuit indicated that it is permissible under the Gorham test to compare the patented design and the accused design in the context of similar designs found in the prior art. Specifically, it noted that in some cases, when the claimed design and the accused design are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art.

If an accused infringer elects to rely on comparison with prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer. Regardless of whether the accused infringer elects to present prior art it considers pertinent to this comparison, the ultimate burden of proof to demonstrate infringement by a preponderance remains with the patentee. The Federal Circuit indicated it will leave it to future cases to further develop the application of this standard.


Quanta Computer, Inc. v. LG Elec., Inc.

On June 9, 2008, the U.S. Supreme Court issued its decision in Quanta Computer, Inc. v. LG Electronics, Inc. In reversing the Federal Circuit, the Supreme Court held that patent exhaustion (1) can apply to method patents and (2) can apply to the sale of components of a patented system that must be combined with additional components in order to practice the patented methods.


Patent Reform Legislation Update

Patent Reform Attempt Seems To Be Running Out of Time

Dispute Over Key Damages Provision May Doom Patent Reform -- The Patent Reform Act (S.1145) was recently pulled from the floor schedule by Senate Majority Leader Harry Reid (D-AZ). While not a mortal blow to patent reform, this move, which was a clear reaction to ranking committee members' inability to bridge the gap on the issue of damages, will embolden opponents of patent reform legislation as the debate among interested parties continues.

On February 15, 2008, the Congressional Budget Office ("CBO") released its Cost Estimate for S. 1145, Patent Reform Act of 2007. The following excerpts are taken from the Summary section of the report:

  • CBO estimates that enacting the bill would increase direct spending by $26.9 billion and revenues by $25.5 billion over the 2009-2018 period.…In total, those changes would increase budget deficits (or decrease surpluses) by $1.4 billion over the 2009-2018 period.
  • CBO estimates that changes in direct spending and revenues from enacting the bill would not cause an increase in the deficit of more than $5 billion in any of the 10-year periods between 2018 and 2057.
  • CBO estimates that implementing the bill would increase net discretionary spending by $0.5 billion over the 2009-2018 period, assuming appropriation of the necessary amounts.

The Patent Office Professional Association (POPA), which includes patent examiners, voiced its opposition to S.1145 by joining 13 other unions in a February 6, 2008 letter to legislators.

All indications are that the patent reform bill, S. 1145, will not be taken up until after Congress's Easter recess, which ends on March 30.

The Biotechnology Industry Organization recently released a study conducted by noted economist Robert J. Shapiro and health care policy expert Aparna Mathur entitled "The Economic Implications of Patent Reform: The Deficiencies and Costs of Proposals Regarding the Apportionment of Damages, Post-Grant Opposition and Inequitable Conduct." The study concludes that the three proposals would make patents "harder to secure, easier to invalidate, and cheaper to infringe" and that "[t]he net effects will reduce the value of patents and the intellectual property they represent, dampening R&D and the consequent pace of innovation in the United States." See Study, p. 2.

On January 24, 2008, Senate bill S. 1145: Patent Reform Act of 2007 was placed on the Senate Legislative Calendar. (Calendar No. 563). The bill, which is sponsored by Sen. Patrick Leahy (D-VT) and co-sponsored by 9 other Senators (7 Republicans; 2 Democrats) promises significant changes to the patent system and patent litigation. Though there is no date certain for a vote on the bill, ranking Judiciary Committee members have indicated a desire to take up the bill as soon as possible in 2008. (See Cong. Rec. 12/18/07, pp. S15898-S15899).

Among the proposed changes in the bill are a number of provisions sure to have a significant impact on patent litigation. Notably, the bill contains, inter alia, the following revisions: (1) a shift to a first-to-file policy for determining the effective filing date of an invention; (2) a requirement that courts consider a patent’s specific contribution over the prior art in determining damages – an entire market value rule; (3) an expansion of the prior user defense; (4) an increased role for third parties in patent examination and post-grant review procedures; and (5) a change to the venue requirements, which would allow civil patent cases to be brought only in the district where either party resides or where a corporate defendant was incorporated or has its principal place of business.

While most pundits believe a revised version of S. 1145 will be passed as early as February, particularly given the majority party’s control over the order in which bills are considered and its leaders’ public statements, others caution that the Senate may not have the votes or stomach to pass such sweeping legislation. It is worth noting that the House passed H.R. 1908, which is identical to the Senate bill, in September 2007 with 73 percent of Democrats supporting and 67 percent of Republicans opposing. See GovTrack.us. H. Res. 636--110th Congress (2007): Providing for consideration of the bill (H.R. 1908) to amend title 35, United States Code, to provide for patent reform, GovTrack.us (database of federal legislation) (accessed Jan 31, 2008).

Considerable forces have been mobilized on each side of this debate - the tech industry supporting the reforms and the pharma and bio-tech industries opposing major portions of the bill.  On February 4, 2008, the Administration relayed its opposition to certain aspects of the current version of the bill to the Judiciary Committee. Similarly, comments contained within the Judiciary Committee’s Report on the bill indicate an unwillingness to pass the legislation in its current form.

The Committee will post updates as additional developments as they occur.


In re: Seagate Technologies, LLC

JUNE 7, 2007 – The Federal Circuit heard oral arguments in In re: Seagate Technologies on whether the assertion of an advice of counsel defense to a willful infringement claim should cause a waiver of the attorney-client privilege for communications with trial counsel. Recognizing the impact of the statutory duty of care standard announced in Underwater Devices on the issue of the waiver of the attorney-client privilege, the Court also invited argument on whether the decision in Underwater Devices and the duty of care standard itself should be reconsidered. The result was a lively debate of one of the most nettlesome issues facing patent litigators today.


Federal Circuit decision may have significant impact on the attorney-client privilege and work-product immunity in patent litigation cases

Over the past several years, courts have been split over what exactly is waived when companies attempt to rely upon an opinion of counsel in defense of a charge of willful infringement in patent cases. On January 26, 2007, the Federal Circuit announced that it will give an en banc review of a writ of mandamus filed by Seagate Technology, Inc pertaining to this important issue. The court invited briefing on the following issues:

  1. Should a party’s assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party’s trial counsel? See In re EchoStar Commc’n Corp., 448 F.3d 1294 (Fed. Cir. 2006).
  2. What is the effect of any such waiver on work-product immunity?
  3. Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?