Mary Siceloff

The Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures. However, after the USPTO’s examining attorney published the mark for opposition, a law professor filed a notice of opposition, alleging that Applicant’s mark failed to function as a trademark on the grounds that it is synonymous with the name of a well-known childhood fairytale character, which has long been in the public domain.

In response to the notice of opposition, the applicant filed a motion to dismiss claiming the opposer lacks standing because she is not a competitor and has not used the mark in connection with the manufacturer or sale of dolls. The TTAB disagreed, stating that “Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain.” Apparently, the TTAB was receptive to the opposer’s argument that “she has purchased and continues to purchase said goods and that registration of the applied-for mark by applicant would constrain the marketplace of such goods sold under the name ‘Rapunzel,’ raise prices of ‘Rapunzel’ dolls offered by other manufacturers.” Accepting this argument, the TTAB held the opposer’s allegations sufficient to establish that she has a direct and personal interest in the outcome of the proceeding, in accordance with the “liberal threshold” established in Ritchie v. Simpson, a precedential opinion issued by the U.S. Court of Appeals for the Federal Circuit.

The TTAB reiterated the Federal Circuit’s holding that, “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer.” Instead, “the crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue.” “Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain, (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.”

In light of the above, members of the consuming public may have a real interest in preventing exclusive appropriation of merely descriptive or generic terms by trademark owners. As such, consumers are entitled to challenge the registration of trademarks through opposition proceedings before the TTAB.

Actors gain notoriety for different reasons.  For some, it’s due to a physical characteristic or an iconic character portrayal.  For Alfonso Ribeiro, it’s a dance.  The dance, which has become known worldwide as the “Carlton Dance,” is a corny dance number performed by Ribeiro’s character Carlton Banks on the 90’s sitcom “The Fresh Prince of Bel Air.”   That dance is now the center of a copyright infringement lawsuit Ribeiro filed against Epic Games and Take-Two Interactive.  Ribeiro claims that Epic Games incorporated the Carlton Dance in the hit fighting game  “Fortnite” and Take-Two did the same in the popular “NBA 2K16” basketball game.

To be fair, Ribeiro is not the only one claiming Take-Two and Epic Games infringed dance choreography; other plaintiffs include rapper Terrence Ferguson (known as 2 Milly) who claims that Epic Games infringed his “Milly Rock” routine, and Russell Horning, better known as Backpack Kid, who claims that Fortnite and NBA 2K16 characters were programmed to mimic moves from his routine, “The Floss.”

Dance routines are protectable under the Copyright Act.  Section 102(a)(4) of The Copyright Act provides copyright protection of  “pantomimes and choreographic works” created after January 1, 1978, and fixed in some tangible medium of expression.   Choreography is the composition and arrangement of a related series of dance movements and patterns organized into a coherent whole.  According to the Copyright Office’s Circular 52, a choreographic work or pantomime typically contain one or more of the following elements:

• Rhythmic movements of one or more dancers’ bodies in a defined sequence and a defined spatial environment, such as a stage
• A series of dance movements or patterns organized into an integrated, coherent, and expressive compositional whole
• A story, theme, or abstract composition conveyed through movement
• A presentation before an audience
• A performance by skilled individuals
• Musical or textual accompaniment

The Copyright Office does state that the presence or absence of a given element does not determine whether a particular work constitutes choreography or a pantomime.

However, individual movements or dance steps by themselves are not copyrightable.  Examples of non-protectable dance steps include the basic waltz step, the hustle step, the grapevine, or the second position in classical ballet. The U.S. Copyright Office cannot register short dance routines consisting of only a few movements or steps with minor linear or spatial variations, even if a routine is novel or distinctive. An example of a commonplace movement or gesture that does not qualify for registration as a choreographic work includes celebratory end zone dance move or athletic victory gesture.

Also not registrable are social dance steps and simple routines. Registrable choreographic works are typically intended to be executed by skilled performers before an audience. By contrast, uncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves. Social dances, simple routines, and other uncopyrightable movements cannot be registered as separate and distinct works of authorship, even if they contain a substantial amount of creative expression.

This could be the first hurdle Ribeiro must overcome.  It seems fair to argue that the “Carlton Dance” is uncopyrightable due to its simple, uncomplicated nature.   The Carlton Dance consists of only a few or steps with minor linear or spatial variation.

Ribeiro credits the Carlton Dance to Eddie Murphy’s routine “White People Can’t Dance” from RAW.  In that routine, Eddie Murphy commented on the ubiquitous nature of the style of dance mimicked by Ribeiro.  While intended to be humorous (and it is), Murphy’s statement was an accurate generalization of the 90’s dance style.  As such, it would not be an unreasonable argument that the “Carlton Dance” is uncopyrightable basic dance step.

Even if the Carlton Dance were registrable, Ribeiro would have to establish that he owned the copyright and not NBC Productions, the studio that produced “The Fresh Prince of Bel Air.”  While this author has not seen Ribeiro’s performer contract, it is standard practice in the entertainment industry that all television performer contracts include a provision which vests the production company with all “right, title and interest, including copyright, in the results and proceeds” of a performer’s services.  As a result of this provision, Ribeiro’s performance as Carlton and all of the characteristics and attributes of the Carlton character would be owned by NBC Productions and not Ribeiro.  As its name implies, the Carlton Dance is an attribute of the character Carlton Banks and any copyright interest therein would likely be owned by NBC Productions.

The fact that the Carlton Dance is an attribute of the television character played by Ribeiro could be a factor in determining his right of publicity claim.  However, Ribeiro has essentially co-opted the “Carlton Dance” as his own by having performed it in numerous talk show and personal appearances.  The right of publicity can extend to various personal attributes such as name, nicknames, pseudonyms, voice, signature, likeness, photograph or other indicia of identity or persona.  An argument that the Carlton Dance has become synonymous with Ribeiro would support a claim that the Carlton Dance is part of his protectable persona.  If such argument is well received by the court, based on the holdings of White v. Samsung Electronics America, Inc., and Wendt v. Host International, the two video game companies could face substantial liability.

Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with claims that are not “patentably distinct” from the claims in the earlier patent.  The core principle behind the doctrine is that “an inventor must fully disclose [the] invention and promise to permit free use of it at the end of [the] patent term.”  See Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical (“Breckenridge”).  “Prohibiting double patenting prevents a patentee from obtaining sequential patents on the same invention and obvious variants” to improperly extend patent protection beyond the “statutorily allowed patent term of that invention.”  Id.

In Gilead Sciences, Inc. v. Natco Pharma Ltd., the Federal Circuit previously held that the key to whether a patent is invalid due to ODP is found in the order in which the patents issued.  Only the last patent to issue could be invalid under the double-patenting doctrine.  However, in two decisions issued by the Federal Circuit on December 7, 2018, the Court further narrowed the applicability of this test thus limiting the cases where obviousness-type double patenting can be used to invalidate patents.

In Breckenridge, the Court addressed a “potential double-patenting situation in which the later-filed of two related patents, which share a common specification and effective filing date, expires before … the earlier-filed patent due to an intervening change in law.”  When the first patent was filed, a patent expired 17 years after the date the patent issued.  When the second patent was filed, the law had been changed under the Uruguay Round Agreements Act of 1994 (“URAA”) so a patent was set to expire 20 years after the patent’s earliest filing date.  This change in law caused the second patent to expire before the first patent.  Applying Gilead, the district court determined the second patent could invalidate the first patent under the obviousness-type double patenting doctrine because the second patent expired first.

In Breckenridge, the Federal Circuit reversed distinguishing Gilead.  In Gilead, both patents had been filed after the effective date of the URAA and claimed different priority dates.  In contrast, in Breckenridge, one patent was filed pre-URAA and one was filed post-URAA.  Thus, the Federal Circuit reasoned a change in patent term law should not truncate the term statutorily assigned to the pre-URAA patent, and therefore, the second patent is not a proper double-patenting reference for invalidating the first patent.

In the second decision, Novartis AG v. Ezra Ventures LLC (“Ezra”), the Federal Circuit addressed “the interplay between a patent term extension (PTE) granted pursuant to 35 U.S.C. §156 and the obviousness-type double patenting doctrine.”  Section 156 “was passed as part of the Hatch-Waxman Act, ‘establish[ing] a patent term extension for patents relating to certain products subject to regulatory delays that could not be marketed prior to regulatory approval.’”  However, “in no event shall more than one patent be extended … for the same regulatory review period for any product.

Ezra argued that, by extending the term of the ‘229 patent, Novartis effectively extended two patents because the ‘229 patent covers a compound necessary to practice the methods claimed by the ‘565 patent.  Therefore, Ezra argued Novartis violated §156 by effectively using the statute to extend the terms for two patents rather than one.  Further, this patent term extension raised the question as to “whether the ‘229 patent is invalid due to obviousness-type double patenting because the term extension it received causes the ‘229 patent to expire after Novartis’s allegedly patentably indistinct ‘565 patent.”

The Federal Circuit concluded that “a PTE pursuant to §156 is valid so long as the extended patent is otherwise valid without the extension.  Thus, the district court was correct in finding that the ‘565 patent is not a double patenting reference to the ‘229 patent and that the ‘229 patent is valid through the end of its PTE.”

Narrowing the applicability of the ruling in Gilead, these two decisions indicate that patents are not likely to fall prey to obviousness-type double patenting issues when there is a change in law or a statutorily permitted extension rather than gamesmanship on the part of a patent applicant.   However, these decisions do not explicitly address all open questions.  For example, given the difference in statutory wording, it is not certain how courts will treat patent term extensions resulting from delays at the patent office.  Will these extensions be treated the same as the §156 extension at issue in Ezra?  What if a patent’s term is first extended for delays in the patent office and then further extended under §156?  These questions are left for another day.

The Ninth Circuit recently was called upon to decide awarding attorney’s fees in a case where artists were suing for unpaid royalties under the California Resale Royalties Act (“CRRA”).  In the case, Close v. Sotheby’s, Inc. (decided December 3, 2018), the Ninth Circuit ordered that the Plaintiff-artists be required to pay attorney’s fees to the defendants (eBay and art auction houses) for successfully defending against claims for unpaid royalties resulting from art sales.  This conclusion required a discussion of the doctrine of preemption and a determination that defendants could still be awarded attorney’s fees under CRRA despite a finding that the bulk of Plaintiffs’ claims under the CRRA were preempted by the 1976 Copyright Act.

Plaintiffs, including the well-known artist Chuck Close, brought an action claiming that they did not receive the appropriate royalties for the sale of their works under the CRRA, which had been enacted in California in 1976.  Under the CRRA, the seller of a work of fine art must withhold 5% of the sale price and remit that amount to the artist.  Artists who do not receive such payments can bring a claim under the CRRA, which also has a provision that the prevailing party in such an action “shall be entitled to reasonable attorney’s fees.”  The Plaintiffs essentially claimed that eBay, Sotheby’s and Christie’s had failed to remit them royalties under the CRRA for as far back as 1976.

At the district court level, the artists lost and their claims were dismissed.  The district court found that the CRRA, which had been enacted in 1976, was subsequently “preempted” by the 1976 Copyright Act that went into effect in 1978.  Preemption occurs where a Federal statute governs a subject matter so that it is the intent of Congress to “preempt” the state from enacting a contrary law.  In essence, the district court was finding that the sole remedy for the Plaintiff-artists for claiming royalties due them was under the1976 Copyright Act and not the California state CRRA.  After the Plaintiff-artists appealed the trial court’s decision to the Ninth Circuit, the Ninth Circuit affirmed the trial court for the most part but did remand some of the claims of Plaintiffs back to the trial court with regard to those sales that occurred between January 1, 1977 and January 1, 1978 (the enactment of the CRRA and the effective date of the Copyright Act).  After the Ninth Circuit’s ruling, the Defendants moved for an award of attorney’s fees claiming that they were the prevailing party under the CRRA.  The Plaintiff-artists opposed the request claiming that since their CRRA claims had been found to have been preempted by federal law, the defendants were not entitled to attorney’s fees under the CRRA for similar reasons.

The Ninth Circuit began by noting that the CRRA allows for an attorney’s fees award to the “prevailing party” and was mandatory because of the use of the language “shall be entitled.”  Nevertheless, because the attorney fee provision had only been added to the CRRA in 1982, the Court would limit its examination of an award of attorney’s fees to those claims pertaining to sales after that date.

Plaintiffs first claimed that because their CRRA claims had been adjudged to be preempted, that meant that the attorney’s fees provision in the CRRA was likewise preempted.  The Ninth Circuit rejected this claim.  First, it rejected the Plaintiffs’ argument that the decision had essentially rendered the CRRA “null and void.”  The Court noted that this is not the legal effect of preemption, rather under the doctrine of preemption, a court is refusing to enforce a claim under state law where it is preempted by an applicable federal statute.  Thus, a ruling that a claim is preempted does not mean that the state law itself is “null and void,” which can only happen if the state legislature subsequently repeals the legislation.  Furthermore, the Ninth Circuit noted that there was nothing in the CRRA that requires a prevailing party to prevail in a certain way, i.e., whether on the merits or by way of preemption. As long as a claim is brought under the CRRA, regardless of whether it is preempted or not, the prevailing party under the express language of the statute “shall be entitled” to its attorney’s fees.

The Ninth Circuit continued by noting that the attorney’s fees provision in the CRRA was not preempted by the 1976 Copyright Act.  First, there was nothing in the 1976 Copyright Act that expressly stated that it was preempting any state law-based attorney fee provisions.  Furthermore, fee-shifting provisions such as the one in the CRRA also appear in the Copyright Act. That is, the attorney’s fees provision in the CRRA is complimentary (rather than contradictory) to the language of the Copyright Act.  Thus, given that state law would apply to the determination of whether attorney’s fees would be awarded because diversity existed between the parties (i.e., the plaintiffs were citizens of states different from those of the defendants), the Court held that it would be proper to award attorney’s fees to defendants under the CRRA.

Finally, the Plaintiff-artists claimed that the Defendants were not necessarily the prevailing party since some of their claims had been permitted to survive, i.e., those claims for sales that took place between January 1, 1977 and January 1, 1978.  The Ninth Circuit rejected this argument and instructed that it was required to look at “the extent to which each party has realized its litigation objectives whether by judgment, settlement or otherwise.”  Here, although a small portion of the Plaintiff-artists’ claims survived, it was just a “sliver” of their claims as compared to those that have been subject to preemption and dismissed.  Therefore, in light of the overall objectives of the litigants, the Court concluded that the Defendants were the “prevailing parties” and entitled to their attorney’s fees.

The Close case demonstrates the importance of being aware of the applicability of fee-shifting statutes.  Although they may provide an incentive for attorneys to take such claims and litigate them, they can be a trap for the unwary if such claims are subject to dismissal through preemption.