Intellectual Property

The Patent and Trademark Office (PTO) may reject a patent application on several different grounds.  One of those grounds is obviousness.  Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art, then it is not patentable.

In determining whether an invention is obvious, the PTO compares the invention to the “prior art” – all similar inventions that are publicly available at the time the application is filed.  If the PTO rejects the invention as obvious, the applicant can respond by narrowing the invention or arguing that the PTO is wrong.  In addition, the applicant can submit evidence of certain factors that the courts have held are relevant, objective indicia of nonobviousness.  These factors are called “secondary considerations.”  They include evidence of: unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, and copying by competitors.

The courts have held that the secondary considerations are often “the most probative and cogent evidence of nonobviousness” and that they help prevent the PTO from relying on hindsight in determining obviousness.  The PTO is required to consider this evidence, if it is presented, in determining the patentability of the patent application.

The Federal Circuit Court of Appeals has addressed these secondary considerations in the context of a competitor’s challenge to an issued patent.  Liqwd, Inc. v. L’Oreal USA, Inc. (941 F.3d 1133) (Fed. Cir. 2019).  There, L’Oreal challenged Liqwd’s hair treatment patent in a post-grant review – a procedure before the Patent Trial and Appeal Board (PTAB) in which an issued patent can be invalidated.  The PTAB agreed with L’Oreal that most of the patent’s claims were obvious and therefore not valid.  Liqwd presented evidence that L’Oreal had copied the invention in Liqwd’s patent.  The PTAB held that the evidence of copying was not persuasive because Liqwd had not shown that L’Oreal had copied a specific product.  Liqwd appealed the PTAB’s decision.

The Federal Circuit vacated and remanded the case.  The court explained that knowledge of an issued patent plus circumstantial evidence of changes by a competitor to its product to make it the same as the patented invention is sufficient to show copying.  (Id. at 1138.)  The court stated that copying of an issued patent requires access to the invention (or the patent) and evidence of copying.  (Id.)  According to the court, the PTAB improperly ignored Liqwd’s evidence of L’Oreal’s copying.  The court remanded the case to the PTAB to consider the evidence of L’Oreal’s copying in determining the obviousness of Liqwd’s patent.

To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication. Is a copyright notice sufficient evidence that a textbook was publicly accessible? The short answer is no in most, if not all, cases.  In Hulu, LLC v. Sound View Innovations, LLC, the PTAB denied Hulu’s IPR petition on the ground that Hulu had not provided sufficient evidence to show that a prior art textbook with copyright and ISBN dates was publicly available as of those dates.  As a result, Hulu requested rehearing of the PTAB decision denying institution of inter partes review of the validity of Sound View’s patent, U.S. Patent No. 5,806,062.  Hulu argued the decision was in conflict with other PTAB decisions “involving the public availability of an asserted ‘printed publication.’”

“Because prior [PTAB] decisions conflicted on requirements for institution involving issues of public accessibility of an asserted ‘printed publication,’” the Precedential Opinion Panel (“POP”) ordered a rehearing to address the question:  “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?”  In the POP’s precedential opinion, it reversed the PTAB panel and found that in this instance, “based on the totality of the evidence currently in the record,” there was sufficient evidence “to establish a reasonable likelihood that the [textbook] was publically accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication” for the purposes of institution of an IPR.  However, the POP’s opinion makes it clear that under current precedent, relying on a copyright notice is not enough even for a well-known textbook.  The POP, however, declined to indicate what would be per se enough.  Thus, the opinion leaves many unanswered questions as to what is sufficient evidence that a printed publication is publicly accessible for purposes of institution of an IPR.  It is also not clear how, in practice, the requirements for institution now differ from the requirements to prevail in a final written decision by the PTAB even though the standards are different.

In prior institution-stage decisions favoring Hulu’s position, the PTAB previously found that 1) “a copyright notice is prima facie evidence that a publication is prior art”; 2) ”a copyright notice, alone or combined with other minimal corroborating evidence, is sufficient evidence of public accessibility to meet the ‘reasonable likelihood’ threshold for institution”; 3) “a copyright notice by a well-known publisher in the United States is sufficient evidence of public accessibility”; 4) “a copyright notice should be evidence viewed in the light most favorable to a petitioner when resolving disputes regarding public accessibility at the institution stage”; and 5) “where a patent owner merely points out possible inconsistencies in petitioner’s evidence—without submitting its own evidence of a different public availability date—the petition should be instituted, and any determination as to public availability occur during the trial.”  But other PTAB decisions have required significantly more evidence of public accessibility at the institution stage.

Hulu argued “the relevant standard for institution is whether there is a reasonable likelihood that a reference is a printed publication” and that “’conventional markers’ of publication satisfy this standard.”  Hulu further pointed out that the full evidentiary record would be developed during the trial phase to satisfy the preponderance of the evidence standard required to prevail in a final written decision.  The patent owner agreed with the “reasonable likelihood” standard but argued the standard is only met when the “petitioner presents its ‘case in chief’ in the petition, including all evidence that will be used in any instituted review…”  Specifically, the patent owner argued that conventional markers (e.g., copyright notices) are not sufficient to meet the standard for institution.

In its opinion, the POP relies on the applicable statutory language to reach its decision.  Section 311 indicates that an IPR petition “must be based on ‘a ground that could be raised under section 102 [anticipation] or 103 [obviousness] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (boldface omitted, emphasis added).  Further, Section 312(a) requires that “the petition must identify with particularity … the evidence supporting those grounds, including the prior art patents and printed publications and affidavits or declarations of supporting evidence and opinions.”

As a result, the POP found that “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies a printed publication.”  The POP goes on to state that this is a higher standard than notice pleading but a lower standard than the “’preponderance’ standard required to prevail in a final written decision.”

The POP declined to find that “any particular indicia per se is sufficient at the institution stage,” but instead stated that “indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.”

Applying the law to the facts in Hulu, the POP determined Hulu had established a reasonable likelihood that the textbook was a printed publication because of the copyright date, the printing date, the ISBN date, and a declaration and supporting material showing the textbook was from an established publisher and was part of a well-known book series.  The POP, however, declined to indicate whether anything less than this evidence would have been sufficient.  Further, the POP declined to opine as to whether this evidence would be sufficient to meet the preponderance of the evidence standard required to prevail in a final written decision.  Therefore, we are left with the question of whether a supporting declaration or equivalent “independent” evidence will be needed at the institution stage when using any textbook, journal paper, or conference paper as a printed publication.  Based on the current precedent, it appears the answer is that we should proceed with caution and always include support, such as that referenced in Hulu, in IPR petitions.

The POP pointed out that while a petitioner must submit the evidence of a reference’s public accessibility in the initial petition, a petitioner will have limited opportunities to submit new evidence, such as in reply to a patent owner’s preliminary response, in reply to a patent owner’s response, or in a motion to file supplemental information.  For example, a petitioner would be allowed to submit a declaration in reply to a patent owner’s challenge of a reference’s status as a printed publication.  But it does not seem worth the risk.  Include the evidence in the petition, if at all possible.

When Disney chose to delay the production and release of merchandise related to The Child—commonly referred to as Baby Yoda—from its hit series, The Mandalorian, it created a significant opportunity for unlicensed fans to create and sell such merchandise. According to statements released by the Walt Disney Company, it intentionally delayed the production of Baby Yoda merchandise to avoid any leaks about the character’s existence until The Mandalorian aired. Because the first episode of The Mandalorian was not released until November 12, 2019, the Walt Disney Company was left with minimal time to release related merchandise. In fact, the Walt Disney Company was only able to roll out limited merchandise in advance of the holiday season, presumably losing a substantial sum of money it would have earned if it had released its full assortment of Baby Yoda gear before the holidays. Of course, as is usually the case with Disney and Star Wars fans, when Disney and LucasFilms fail to deliver, the fans intervene—this is the way.

If you go to Etsy, you’ll find a substantial variety of Baby Yoda merchandise, including without limitation, t-shirts, crochet dolls, coffee mugs, stickers, tumblers, keychains, and bookmarks. Make no mistake, none of it is officially licensed. Every merchant on Etsy that is selling Baby Yoda merchandise is infringing Disney’s copyright in the character. Knowing that, you might be wondering, why doesn’t Disney just put a stop to it by enforcing their copyright? The Digital Millennium Copyright Act includes a mechanism through which a copyright holder can almost immediately have an infringing user’s material taken offline. Similarly, the Copyright Act enables a copyright holder to sue to enforce their intellectual property rights and to obtain injunctive relief precluding the infringing user from using the mark. We all know Disney can afford to take action, and those of us who regularly deal with intellectual property know that Disney aggressively polices its intellectual property. So why hasn’t Disney taken action?

The answer is they have, but there are just too many infringing merchants on Etsy for Disney to deal with. Disney has recently taken action against these infringing users by contacting Etsy, identifying certain users, and requesting that their infringing listings be taken offline. As a result, Etsy has been deactivating the listings identified by Disney and warning merchants they should not re-list the product unless the dispute is worked out with the copyright holder. But as you can see by searching for Baby Yoda on Etsy, there are still nearly 12,000 search results. This is because there are so many merchants selling these counterfeit goods that Disney cannot send out takedown notices and/or cease and desist letters fast enough. In order to do so, Disney would have to regularly review Etsy for infringing goods, examine each of the goods, and send a new takedown notice or cease and desist letter.

Some sites, such as YouTube, provide a more efficient mechanism through which copyright holders can enforce their rights by utilizing an automated tool to identify all infringing content. Unfortunately for Disney, Etsy does not. Instead, Etsy requires copyright holders to review all search results and deal with the infringing merchants on a case-by-case basis. This process is time consuming and requires substantial resources from the copyright holder. But as a result of the Digital Millennium Copyright Act’s safe-harbor provision, which enables Etsy to avoid most liability for infringement perpetrated by its users, Etsy isn’t incentivized to make the process more efficient for copyright holders. In other words, it isn’t really Etsy’s problem, so why should Etsy concern itself?

Nonetheless, Disney could likely dedicate adequate resources to this issue to eradicate the presence of such counterfeit goods on Etsy. However, doing so would be a time-consuming and costly endeavor. Disney will have to decide whether it is worth the time and effort to shut down every merchant on Etsy, or whether it should selectively target the larger, more harmful infringing merchants. The latter would obviously be a more economical approach, but Disney has proven in the past that it is willing to go the extra mile to protect its intellectual property as a matter of principle. While that approach may not make sense for all businesses, it works for companies like Disney that have virtually unlimited resources. Whether Disney will take this approach, however, remains to be seen. One thing is for certain: begun, the Baby Yoda wars have.

In the early 2000’s, an all-girl band called 3LW performed a song called “Playas Gon’ Play,”  which was written by Sean Hall and Nathan Butler.  “Playas Gon’ Play” was initially released in May, 2001 and rose to number 81 on the Billboard’s Hot 100 chart.  The album on which “Playas Gon’ Play” appeared sold over One Million copies and 3LW performed the song numerous times on national television.  The chorus of “Playas Gon’ Play” consists of the following lyrics:

Playas, they gonna play
And haters, they gonna hate
Ballers, they gonna ball
Shot callers, they gonna call
That ain’t got nothin’ to do
With me and you
That’s the way it is
That’s the way it is.

Hall and Butler sued Taylor Swift, her co-authors on “Shake It Off,” as well as various other parties related to “Shake It Off” and the album on which it was included.  Hall and Butler alleged a single claim of copyright infringement premised upon the lyrical similarities between “Playas Gon’ Play” and “Shake It Off.”

On Swift’s motion to dismiss, the sole issue before the court was whether any elements of “Shake It Off” were substantially similar to protectable elements of “Playas Gon’ Play.”  Unlike most music cases, here the court was not called upon to consider the relevant songs’ sound.  Here the court was to focus on similarities between portions of the songs’ lyrics.  The court noted that the only obvious similarities between the two works is that “Playas Gon’ Play” contains the lyrics “Playas, they gonna play / And haters, they gonna hate,” and “Shake It Off” contains the lyrics “Cause the players gonna play, play, play, play, play / And the haters gonna hate, hate, hate, hate, hate.” Before considering whether this satisfied substantial similarity, the court considered whether the allegedly infringed elements of Hall and Butler’s song – the lyrics “Playas, they gonna play / And haters, they gonna hate” are eligible for protection under the Copyright Act.

The Copyright Act protects “original” works of authorship fixed in any tangible medium of expression. The court noted that songs or a portion of a song “must be sufficiently original and creative to warrant copyright protection.”  Originality signifies “that the work originates in the author rather than having been copied from past sources” and creativity signifies “that the work has a spark that goes beyond the banal or trivial.”

The district court found the allegedly infringed phrases to be “too brief, unoriginal and uncreative to warrant protection under the Copyright Act.”  Hall and Butler appealed the dismissal to the Ninth circuit who then reviewed the case de novo.

On appeal, the 9th Circuit took issue with the basis of the district court’s dismissal based on lack of originality. In noting that originality is a question of fact, the court quoted the late Supreme Court justice Oliver Wendell Holmes, Jr. who once wrote, “It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”  The 9th Circuit held that when the appeals court concluded that, “for such short phrases to be protected under the Copyright Act, they must be more creative than the lyrics at issue here,” the district court constituted itself as the final judge of the worth of an expressive work.  Because the absence of originality is not established either on the face of the complaint or through the judicially noticed matters, the appeals court reversed the district court’s dismissal under Rule 12(b)(6).

In the grand scheme of copyright litigation in the 9th Circuit, this decision will make it much more difficult (if not impossible) for a defendant to put an early end to a frivolous infringement case.  Courts routinely dismiss copyright infringement claims because they fail to show infringement of an original work.  In the 9th Circuit, that’s not going to be possible any longer.  Now, the determination of originality will require costly discovery.

In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees – even in cases it loses – because it violates the so-called American Rule, which says U.S. litigants must typically pay for their own lawyers.

The Patent Act creates two mutually exclusive pathways to challenge an adverse decision by the USPTO. The first permits judicial review by direct appeal to the United States Court of Appeals for the Federal Circuit. There is “no opportunity for the applicant to offer new evidence” in a §141 proceeding, and the Federal Circuit “must review the PTO’s decision on the same administrative record that was before the [agency].”

The second pathway allows applicants to file a new civil action against the USPTO in federal district court.  Unlike §141, §145 “permits the applicant to present new evidence . . . not presented to the PTO.” The district court “acts as a factfinder when new evidence is introduced in a §145 proceeding” and must make de novo determinations that take into account “both the new evidence and the administrative record before the PTO.”

The parties may appeal the district court’s final decision to the Federal Circuit. Because §145 does not limit an applicant’s ability to introduce new evidence to challenge the denial of a patent, it can result in protracted litigation. As a condition for permitting such extensive review, the Patent Act requires applicants who avail themselves of §145 to pay “[a]ll the expenses of the proceedings.” The question the Court thus had to consider is whether such “expenses” include the salaries of attorney and paralegal employees of the USPTO.

In considering the issue, the Court started with the bedrock principle that “[e]ach litigant pays his own attorney’s fees, win or lose, unless a statute or contract provides otherwise.”  This is known as the American Rule, which has “roots in our common law reaching back to at least the 18th century.”  However, the USPTO argued the American Rule did not apply here because it is only applied when a statute awards fees to a “prevailing party,” and this was not a “prevailing party” case since the USPTO was entitled to its expenses regardless of whether it won or lost.

The Court rejected this argument reasoning it has never suggested that any statute is exempt from the presumption against fee shifting or limited its American Rule inquiries to “prevailing party” statutes. Rather, the Court has developed a line of precedents addressing statutory deviations from the American Rule that do not limit attorney’s fees awards to prevailing parties.  The Court further reasoned the presumption against fee shifting is particularly important here because reading §145 to permit an unsuccessful government agency to recover attorney’s fees from a prevailing party “would be a radical departure from longstanding fee-shifting principles adhered to in a wide range of contexts.”  Thus, the Court determined the American Rule does apply here and provides the starting point for assessing whether §145 authorizes payment of the USPTO’s legal fees.

Therefore, to determine whether Congress intended to depart from the American Rule presumption, the Court “look[s] to the language of the section” at issue. While “[t]he absence of [a] specific reference to attorney’s fees is not dispositive,” Congress must provide a sufficiently “specific and explicit” indication of its intent to overcome the American Rule’s presumption against fee shifting. In doing so, the Court found Section 145’s plain text does not overcome the American Rule’s presumption against fee shifting because the reference to “expenses” in §145 does not invoke attorney’s fees with the kind of “clarity we have required to deviate from the American Rule.”

Specifically, the Court found the definition of “expenses” in the statute, while capacious enough to include attorney’s fees, does not provide sufficient guidance.  The Court explained the mere failure to foreclose a fee award “neither specifically nor explicitly authorizes courts to shift [fees].” But, the Court reasoned the complete phrase “expenses of the proceeding” would not have been commonly understood to include attorney’s fees at the time §145 was enacted.  Moreover, the modifier “all” does not transform “expenses” to reach an outlay it would not otherwise include.  Instead, in common statutory usage, the term “expenses” alone has never been considered to authorize an award of attorney’s fees with sufficient clarity to overcome the American Rule presumption. In addition, the appearance of “expenses” and “attorney’s fees” together across various other statutes indicates that Congress understands the terms to be distinct and not inclusive of each other. Therefore, the Court found Section 145’s plain text does not overcome the American Rule’s presumption against fee shifting to permit the USPTO to recoup its legal personnel salaries as “expenses of the proceedings.”

The Court next considered the USPTO’s argument that, on occasion, the Court itself has used the term “expenses” to mean “attorney’s fees.”  However, the Court quickly rejected this argument, reasoning in common statutory usage, the term “expenses” alone has never been considered to authorize an award of attorney’s fees with sufficient clarity to overcome the American Rule presumption.

The Court also explained the Patent Act’s history reinforces that Congress did not intend to shift attorney’s fees in §145 actions. The Court noted there is no evidence that the original Patent Office ever paid its personnel from sums collected from adverse parties. In addition, the Court noted that the USPTO has not, until this litigation, sought its attorney’s fees under §145. Thus, the history of the Patent Act also reaffirms the Court’s view that the statute does not specifically or explicitly authorize the USPTO to recoup its lawyers’ or paralegals’ pro rata salaries in §145 civil actions.

Thus, in sum, the Court concluded that the USPTO cannot recover the pro rata salaries of its legal personnel under §145 and therefore affirmed the judgment of the Court of Appeals for the Federal Circuit.

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For additional articles on intellectual property issues, please visit Weintraub’s law blog at www.theiplawblog.com.

One of the most common forms of relief sought in trade secret litigation is an injunction preventing the defendants from using or disclosing the plaintiff’s trade secret information.  Although temporary restraining orders and/or preliminary injunctions may be obtained that are in place during the lawsuit, a permanent injunction is entered after trial and typically has no set time period for expiration.  There are various statutes that allow a defendant to seek to modify or dissolve a trade secret injunction at a later date, including a showing that the information that is the subject of the injunction is no longer entitled to trade secret protection.  The recent decision in Global Protein Products, Inc. v. Le (Cal. 6th App. Dist.) helps illustrate the high hurdle a defendant must clear in order to obtain such relief.

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The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing dates of any related patent applications that were filed before the application (the priority chain).  This date determines which prior art can be used by the Patent and Trademark Office to determine patentability of the invention and which prior art can be used by competitors to challenge the patent’s validity.

The priority date must be asserted when the patent application is filed.  It is difficult, and sometimes not possible, to correct the priority date if it is not asserted, or improperly asserted, when the application is filed.  Thus, patent attorneys must be careful to make sure that the correct priority date is stated in the application at the time of filing.

This issue was recently addressed by the Federal Circuit Court of Appeals in Honeywell International v. Arkema Inc., 2019 U.S. App. LEXIS 29478 (October 1, 2019).  In that case, Honeywell filed a patent application in 2014 with a priority date of 2002.  The patent application was amended during prosecution to change what was claimed as the invention, but the applicant failed to change the priority chain to list the related applications that corresponded to the invention as claimed.

The patent was issued in 2015.  Shortly thereafter, Arkema filed two petitions for post grant review, challenging the patent in the Patent Trial and Appeal Board.  Arkema alleged that the patent application was not entitled to the 2002 priority date because the claims, as amended, were not supported by the related applications going back to 2002, but were only supported by the 2014 application itself.  According to Arkema, the priority date was 2014, not 2002.  Based on the 2014 date, Arkema alleged that the patent was invalid due to prior art that became known between 2002 and 2014.

Honeywell argued that it had failed to list the correct related applications in the priority chain.  Honeywell requested that the PTAB permit it to file a motion for leave to file a petition to the Director of the PTO for a Certificate of Correction to correct the priority chain.

Under 35 U.S.C. § 255, a patent owner must seek to correct a patent by filing a petition to the Director of the PTO for a Certificate of Correction.  In order to obtain a Certificate of Correction, the patent owner must satisfy three requirements: (1) the error must not be the fault of the PTO and must be a clerical or typographical error or another minor error; (2) the error must have been made in good faith; and (3) the correction must not constitute new matter in the patent application.

If a patent is under post grant review in the PTAB, the patent owner cannot file a petition for a Certificate of Correction until it first obtains authorization from the PTAB.  To do that, the patent owner must request leave from the PTAB to file a motion.  If leave is granted, the patent owner must then file a motion in the PTAB requesting that the PTAB cede its jurisdiction back to the PTO Director; if the motion is granted, then the patent owner may file its petition for a Certificate of Correction to the Director.

Honeywell followed the proper steps.  However, the PTAB denied Honeywell’s request and found that the requirements of § 255 were not met.  The post grant review process was then completed, and the PTAB invalidated the claims of the patent.  Honeywell appealed.

The Federal Circuit reversed the PTAB, holding that the PTAB abused its discretion by ruling on whether the requirements of § 255 were met.  The court explained that the authority to decide whether a Certificate of Correction is appropriate belongs only to the PTO Director, not to the PTAB, and that the PTAB cannot decide the merits of the issue.  The PTAB only has the authority to decide the patent owner’s request for leave to file a motion in the PTAB and to decide that motion.

The court found that the PTAB had improperly denied Honeywell the opportunity to file a motion, basing its decision on its view of whether a petition to the Director would be successful.  The PTAB should not have reached the merits at all, let alone without the patent owner being permitted to file a motion.  The court noted that a Certificate of Correction is an appropriate way to correct a priority chain in a patent.  The court vacated the PTAB’s decision and remanded the case to the PTAB, directing the PTAB to allow Honeywell to file its motion asking the PTAB for permission to file a petition to the Director to correct the patent’s priority chain.

When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint.  But, as Game & Technology Co. v. Wargaming (Fed. Cir. 2019) reminds us, a plaintiff must properly serve the complaint to trigger the one-year deadline.  Specifically, “[s[ection 315(b) states that ‘[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.’”  35 U.S.C. § 315(b).

Game & Technology involved a patent, U.S. Patent No. 7,682,243 (the “’243 Patent”) for a method and system for an online game where a pilot (the gamer) controls a virtual object, such as a robot character.  As the pilot’s abilities change, so do the abilities of the virtual object that the pilot controls.

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If you’re plugged into the digital world and its constantly emerging meme trends, you’ve probably encountered various “OK, Boomer” memes by now. If you’re unfamiliar with the trend, here is a brief synopsis. OK, Boomer is a phrase that is used in response to members of the baby-boomer generation who have, through their conduct, demonstrated that they are out of touch. For example, when a member of the baby-boomer generation harps on a member of the millennial generation or Generation Z for allegedly lacking the work ethic of the boomer generation, one might respond, “OK, Boomer.” There are various other situations where the phrase could be used, but as you can see, it is either a trendy insult, or an ageist slur, depending on your point of view.

Regardless, the phrase has gone viral since first appearing on the TikTok app a few weeks ago. Now it’s everywhere. It’s on Instagram, Facebook, and various other platforms. It was even used during a session of New Zealand’s Parliament when an older member heckled a 25-year-old over her policy on climate change. With such widespread popularity and trendiness, it’s not surprising that one of the major producers of television, Fox Media, has filed an application seeking to register OK, BOOMER for use in conjunction with a reality, comedy, or game show. Fox is joined by various other parties who have filed applications to use OK, BOOMER in conjunction with goods, including without limitation, clothing, stickers, and decals.

However, there is some skepticism among trademark experts as to whether these applications will result in trademark registration. D.C.-based trademark attorney Josh Gerben has tweeted about the matter and provided his opinion on the likelihood of registration to CNN. Mr. Gerben told CNN that the USPTO will likely “deny all of these applications because OK BOOMER has become a ‘widely used message.’” Mr. Gerben further opined that, “A trademark registration will not issue in a phrase that is commonly used to convey a social or political message. . . . because such a ‘viral’ phrase is incapable of identifying the source of a product or service—which is what trademarks must do to be capable of registration.” Isn’t it ironic that the very reason that Fox Media and other parties want to register the mark is also the same reason they are probably unable to do so?

Perhaps these parties will move forward with their intended use of OK, BOOMER, and then return to the USPTO claiming that, although their mark was initially incapable of designating its source or origin, the mark has now acquired secondary meaning through use in commerce. In other words, by using the mark in commerce in conjunction with a television show, consumers have come to associate the mark, as applied to television shows, with Fox’s show. That would seemingly get around the initial refusal that trademark experts such as Mr. Gerben are anticipating, but we won’t know until it happens.

Virginia Vallejo, a well known Colombian journalist and media personality, authored the memoir “Loving Pablo, Hating Escobar”.  The book is a factual account of her romantic relationship with Pablo Escobar and a chronicle of the rise of the Colombian drug cartel.

Vallejo claimed that certain scenes in the television series Narcos infringed the copyright in her book, and she sued Narcos Productions, the producer of the series, Gaumont Television, the series’ distributor, and Netflix, the U.S. broadcaster.  Specifically, Vallejo claimed that certain scenes in the series were copied from various chapters in her book, including one that describes a sexual encounter between Vallejo and Escobar involving a handgun, and another that recounted a meeting between Escobar, Vallejo and Ivan Marino Ospina, one of the heads of a Colombian guerilla organization.  Vallejo claimed that the infringing scenes from the first season of Narcos were, respectively, a sex scene in episode three between Escobar and a character named Valeria Velez (who was based on Vallejo) involving a gun, and a scene from the fourth episode in which Escobar meets with a man named “Ivan” who is a leader of a Colombian guerilla organization.

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