Intellectual Property

The Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement. This decision could significantly impact numerous licensees throughout the world if the Court affirms the First Circuit Court of Appeal’s decision below, holding that a licensee loses its right to use a licensor’s trademarks once the licensor has filed a petition for bankruptcy and the trustee has elected to reject the agreement pursuant to Section 365(a) of the Bankruptcy Code.

Under Section 365(a) of the Bankruptcy Code, a bankruptcy trustee can assume or reject a debtor’s pre-bankruptcy executory contracts, depending on whether the benefits of continued performance outweigh the burdens to the bankruptcy estate. Under that provision, a rejection is treated as a breach by the debtor if certain conditions are met. If those conditions are met, the other party to the agreement is entitled to file a claim for damages in the bankruptcy action, however valueless that may be.

The Bankruptcy Code, however, does not address the matter at issue before the Supreme Court, which is whether rejection of a trademark license agreement strips the licensee of the right to use the mark. Although Section 365(n) protects the rights of “intellectual property” licensees, the Bankruptcy Code’s definition of “intellectual property” does not expressly include trademarks. While most trademark practitioners would be dumbfounded if a court were to interpret “intellectual property” in a manner that doesn’t include trademarks, the First Circuit did exactly that.

Accordingly, the Supreme Court has granted review to resolve a circuit split between the First Circuit, whose holding is discussed above, and the Seventh Circuit, which held that a licensee’s trademark rights survive rejection of the agreement in bankruptcy. See Sunbeam Prods. v. Chi. Am. Mfg., 686 F.3d 372 (7th Cir. 2012). This case has caused numerous IP groups, as well as the United States Government, to file amicus briefs. Interestingly, the U.S. Government has stated that a trademark owner cannot revoke a licensee’s right to use the trademark by rejecting its license agreement under the Bankruptcy Code’s contract rejection mechanism.

Similarly, Mission Product Holdings, the petitioner in this case, has urged the Court to reject the First Circuit’s holding in favor of the Seventh’s, arguing that, “[a]s the great majority of courts and scholars have recognized, rejection is not a special bankruptcy power to terminate or rescind a contract.” It also does not “allow the trustee to revoke interests in property that the debtor granted to a counterparty under the contract before bankruptcy.”
In contrast, Tempnology, the opposing party, contends the First Circuit made the correct decision. Specifically, Tempnology argues, “The Bankruptcy Code’s strong policy of permitting a debtor to free itself of ongoing obligations under a contract … and the right to reject such obligations applies to the burden of policing trademarks.” As such, Tempnology argues, the First Circuit was correct that a licensee’s right terminate upon rejection.

But this issue was addressed by the American Intellectual Property Law Association’s (“AIPLA”) amicus brief, wherein the AIPLA urged the Court to hold that a licensee’s rights outside of the bankruptcy context govern whether the licensee’s rights survive the licensor’s rejection under the Bankruptcy Code. The AIPLA argues that in the “absence of the Bankruptcy Code specifically addressing trademark licenses, the effect of the breach must be decided under applicable non-bankruptcy law and the language of the contract.” The AIPLA rejected the First Circuit’s rationale that a licensee’s right must terminate in order to avoid restricting a licensor-debtor’s right “to free itself from performing executory obligation” by forcing it to police its marks. The AIPLA contends the First Circuit’s approach was flawed because the duty to monitor a trademark’s use does not arise under the terms of a license agreement, but is instead an independent obligation imposed by federal trademark law.

The United States Government may have said it best: “If a landlord has rented a family an apartment and has agreed to pay the utilities, the landlord cannot later terminate the family’s lease simply by refusing to pay the cable bill[.]” The same principles apply, or at least they should, to trademark licensing agreements. For that reason, among others, I suspect the Supreme Court will overturn the First Circuit’s decision and protect the rights of the licensees.

Over twenty years ago, the Ninth Circuit decided the case of Dr. Seuss Enterprises., LP v. Penguin Books USA, Inc.  That case involved a copyright infringement lawsuit brought by Dr. Seuss over a book entitled The Cat NOT in the Hat! A Parody by Dr. Juice.  This book was about the O.J. Simpson trial presented in Seuss style rhyming verse and animation. The work begins:

A happy town

Inside L.A.

Where rich folks play

The day away.

But under the moon

The 12th of June.

Two victims flail

Assault!  Assail! 

Somebody will go to jail! Who will it be?

Oh my!  Oh me!

The book also presents a view of the OJ Simpson criminal murder trial from OJ’s perspective: “A man this famous/Never hires/Lawyers like/Jacoby Meyers/When you’re accused of a killing scheme/You need to build a real Dream Team.” The book’s illustrations included Simpson depicted 13 times in the distinctively scrunched and shabby stovepipe hat worn by the Cat in the Hat.  The defendants claimed that their use was non-infringing fair use; the court did not agree.

Over twenty years later (and just this month), the Ninth Circuit decided the case of Dr. Seuss Enterprises v. Comicmix, LLC et al., which involved a copyright infringement lawsuit over a Star Trek and Dr. Seuss mashup entitled Oh, The Places You’ll Boldly Go.  This work intermixes Star Trek characters like Captain Kirk, Spock and the Starship Enterprise in the Seuss world; for example, the cover features Kirk standing on a small moon or asteroid above the Enterprise  evoking the rainbow ringed disc and tower or tube pictured on the original work’s cover, The defendants admitted that they “painstakingly attempted” to make their illustrations “nearly identical” in certain respects to illustrations in the Dr. Seuss book, Oh, The Places You’ll Go, and went to great lengths to mimic the Seuss writing style.  The defendants claimed that their use was non-infringing fair use; the court agreed.  As the Grinch said, “how could it be so?”

In Cat NOT in the Hat, the defendant’s case relied mostly on fair use; primarily that the work was a parody.  The Ninth Circuit, in determining the first fair use factor – the purpose and character of the use – found the book was not a parody.  The court noted that while the book “does broadly mimic Dr. Seuss’ characteristic style, it does not hold his style up to ridicule” and that “[t]he stanzas have no critical bearing on the substance or style of The Cat in the Hat.”  The court essentially closed the door on the defendant’s case when it noted that there is “no effort to create a transformative work with “new expression or meaning.”

In Oh, The Places You’ll Boldly Go, the defendants also relied on the fair use defense and claimed that their work was a parody. While the Ninth Circuit, similar to Cat NOT in the Hat found the work not to be a parody, the court went on to determine that it was “highly transformative.”

It’s challenging to reconcile the treatment of the first fair use factor in the two cases, as the Ninth Circuit in Cat NOT in the Hat did not go into an analysis of the transformative nature of the work separate and apart from the inquiry into whether it was a parody.  In the Boldly Go case the court went to great lengths to explain how and why the work is transformative.  The court noted that while the defendants borrowed (liberally at times) from the Seuss work, the “elements borrowed were always adapted or transformed” by the inclusion of Star Trek (or Trek like) characters; the defendants’ additional material reframed the original material from a unique Star Trek viewpoint.

In considering the third factor^[1], whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole are reasonable in relation to the purpose of copying, the court in Cat took great issue with the defendant’s frequent use of the Cat in the Hat image and rejected the philosophical parallels the defendants attempted to draw between the two works, calling it a completely unconvincing post-hoc characterization.

However, in Boldly Go the court found that the defendants took no more from the original work than was necessary in order to create a mash-up of Go and Star Trek.  The court went to great lengths to examine the elements of the Seuss work entitled to copyright protection and measure the extent of the defendants’ copying of those elements.  For example, the court noted that Seuss “may claim copyright protection in the unique, rainbow-colored rings and tower on the cover of Go!  Plaintiff, however, cannot claim copyright over any disc-shaped item tilted at a particular angle.”  Even though Boldly Go was found not to be a parody, the court found that it did not “copy more than is necessary to accomplish its transformative purpose.”

Like Cat, Boldly Go liberally copied certain aspects of Go, however, the court specifically noted that the defendants did not copy verbatim text or replicate entire images.  To the author’s understanding, neither did Cat NOT in the Hat. The only significant difference that may explain the disparate treatment of this factor is that Cat NOT made liberal use of the Cat figure while Boldly Go apparently made no use of any major Seuss character.

The last fair use factor examines the effect (e.g., market harm) the infringing work may have on the value of the copyrighted work.  The key purpose is to determine to what degree the infringing work is a substitute for the original work.  Transformativeness and this factor are closely related; if a new work is transformative it’s not a substitute for the original work. In Cat NOT in the Hat the court said that because the work was not transformative, “market substitution is at least more certain, and market harm may be more readily inferred.”

In Boldly Go the court noted that Go is an extremely popular book for graduates and Seuss or its licensees have published many derivatives of Go.  The plaintiff claimed the work in question would harm its licensing opportunities.  The court found that Boldly Go is not a substitute for the original work as a children’s book; its impact on the market for graduation gifts or derivatives is a closer question. Because the court found Boldly Go to be transformative, the plaintiff was required to introduce evidence showing harm and such showing must be by a preponderance of the evidence.  The court found that the plaintiff failed to meet this burden.  Because the plaintiff introduced no evidence tending to show that it would lose licensing opportunities or revenues as a result of publication of Boldly Go or similar works, the potential harm to plaintiff’s market remains hypothetical.  As such, the court concluded that this factor favors neither party.

In Cat Not in the Hat the court found that the weight of the fair use factors favored a finding against fair use while Bold Go resulted in the opposite.  While these cases may seem tough to reconcile, there are distinct factual differences that may have caused the same court to find one way or another.  Also, followers of fair use cases appreciate that fair use is by no means static; it’s more like an active pendulum.

^[1] In both matters, the second factor – the nature of the copyrighted work – favored the plaintiff.  This is usually the case with dealing with creative works.

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners.

When a patent applicant files for a patent, the USPTO assigns an examiner to review the application and determine whether the claims are patentable and a patent should issue.  If the patent examiner rejects claims in a patent application, the applicant can appeal that decision to the USPTO’s Patent Trial and Appeal Board (“PTAB”).  If that appeal is not successful, the applicant has two options for challenging the rejection.  The applicant can either 1) appeal the rejection directly to the Court of Appeals for the Federal Circuit or 2) file a civil action in the District Court for the Eastern District of Virginia.  35 U.S.C. §145.  Unlike in an appeal to the Federal Circuit, if the applicant brings an action in the district court, “[a]ll the expenses of the proceedings shall be paid by the applicant” regardless of the outcome of the litigation.  Id. 

There are pros and cons to these two options for challenging an examiner’s decision.  The Federal Circuit typically offers faster resolution, but it relies only on the record that was before the USPTO and does not review the matter de novo.  In contrast, filing a civil action in district court is slower, litigation expenses may be higher, and the patent applicant is required to pay the USPTO’s expenses regardless of whether the applicant wins or loses.  The district court, however, offers the applicant the option to present new evidence that was not presented to the USPTO, and the court must review that new evidence de novo.

While the statutory language requiring an applicant to pay all expenses in district court actions has long been in effect, the USPTO had not sought to recover attorneys’ fees in the past.  The USPTO, however, argues that two things changed in 2013 that led it to seek attorneys’ fees.  First, “in the America Invents Act, Congress directed the agency to set its fees so as ‘to recover the aggregate estimated costs to the [USPTO] for processing, activities, services, and materials relating to patents *** and trademarks.’”  Second, proceedings under Section 145 “have grown increasingly expensive and the single largest expense to the USPTO is often the time that agency employees must devote to those matters.’”

Therefore, for the first time in Shammus, the USPTO sought attorneys’ fees as part of its expenses under Section 145’s trademark provision.  Allowing recoupment of attorneys’ fees, the Court of Appeals for the Fourth Circuit explained that “the imposition of all expenses on a plaintiff in an ex parte proceedings, regardless of whether he wins or loses, does not constitute fee-shifting that implicates the American Rule.”  Shammus v. Focarino, 784 F.3d 219 (4^th Cir. 2015).  The “American Rule” assumes each party pays its own attorneys’ fees absent explicit statutory authority to the contrary.

In Iancu, the USPTO has sought attorneys’ fees under Section 145’s patent provision.  The question raised in Iancu is whether the “expenses” that the applicant must pay in a district court proceeding challenging an examiner’s rejection of patent claims include the salaries for attorneys’ employed by the USPTO who work on the case.  In Iancu, the USPTO sought to recoup over $78,000 in attorney and paralegal salaries and over $33,000 in expert witness expenses.  The district court allowed reimbursement for the expert witness expenses but not the salaries.  The district court distinguished between the two types of expenses in finding that in light of the presumption under the “American Rule,” Section 145 was not sufficiently “specific and explicit” to cover attorneys’ fees or salaries.  The Federal Circuit, in a divided decision, reversed finding that “expenses” include “attorneys’ fees.”  Acting sua sponte, the Federal Circuit en banc reheard the case and ruled 7-4 that Section 145 does not cover attorneys’ fees because the statutory language “all the expenses” is not sufficiently “specific and explicit” to overcome that presumption of the “American Rule.”

In its petition for certiorari, the USPTO points to the Shammus ruling regarding trademark actions in support of its argument that the “American Rule” only applies in fee-shifting scenarios where a prevailing party is seeking to recoup expenses rather in cases such as this where the applicant must always pay the expenses.  However, the Federal Circuit en banc stated “Shammas’s holding cannot be squared with the Supreme Court’s line of non-prevailing party precedent applying the American Rule.”  The Federal Circuit “noted that a statute awarding attorneys’ fees to a losing party would represent ‘a particularly unusual deviation from the American Rule” because “[m]ost fee-shifting provisions permit a court to award attorney’s fees only to a prevailing party, a substantially prevailing party, or a successful litigant.’”

The USPTO also makes policy-based arguments for the reimbursement of attorneys’ salaries.  It argues that applicants have an alternative appellate process where they do not have to pay the USPTO’s expenses, a substantial amount of attorneys’ time is devoted to Section 145 district court proceedings given the additional discovery and new evidence presented, and it is unfair to make other patent applicants effectively underwrite the cost of Section 145 proceedings.

In its opposition to the petition for certiorari, NantKwest pointed out that “expenses” in Section 145 is at best ambiguous.  The fact that “expenses” could be construed to encompass attorneys’ fees or salaries is not sufficient to “specifically and explicitly” authorize attorneys’ fees and overcome the presumption of the “American Rule” that each party pays its own attorneys’ fees absent explicit statutory language to the contrary.  The USPTO, however, argues that even if the American Rule applies, “[a]ll the expenses of the proceedings” “is sufficiently specific and explicit to overcome the presumption … and authorize reimbursement of the USPTO’s” attorneys’ salaries.

The Supreme Court will decide this issue in the upcoming months, so stay tuned.

This week, the Supreme Court resolved a split in the circuits regarding an issue in copyright law that affects copyright owners in California.  Until now, the law in the Ninth Circuit was that a copyright owner could file suit for infringement as soon as they filed a copyright application in the Copyright Office.  However, in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (U.S. Supreme Court, March 4, 2019), the Court rejected this approach, holding that a copyright owner cannot file suit for infringement until the work has been registered by the Copyright Office.

The plaintiff, Fourth Estate Public Benefit Corp., is a news group who writes online articles.  The defendant, Wall-Street.com, is a website for news articles.  Pursuant to a license, Fourth Estate licensed its articles to Wall-Street.com.  Wall-Street.com cancelled the license, but continued to publish Fourth Estate’s articles, in violation of the license.   Fourth Estate filed applications in the Copyright Office to register the copyrights in its articles, and then filed suit against Wall-Street.com for copyright infringement.  Wall-Street.com moved to dismiss the complaint on the grounds that Fourth Estate had not registered its copyrights within the meaning of the Copyright Act of 1976, as amended, as of the filing of the complaint.  The district court granted Wall-Street.com’s motion to dismiss.  The Eleventh Circuit Court of Appeals affirmed.

Copyright protection exists as soon as a work of expression is created.  However, under the Copyright Act, a copyright owner cannot file an action for infringement until “registration…has been made.” 17 U.S.C. §411(a).

The circuit courts are divided as to the meaning of the phrase “registration…has been made,” as set forth in §411(a).  Some circuits, including the Ninth Circuit, take the “application approach,” holding that a copyright has been registered, and therefore an action for copyright infringement can be filed, once the copyright owner has filed its application for registration and the application has been received by the Copyright Office.  Other circuits, including the Eleventh Circuit, take the “registration approach,” holding that a copyright has not been registered, and therefore an action cannot be filed, until the Copyright Office has actually registered the work.

The Supreme Court granted certiorari in the case to resolve the split in the circuits.  The Court held that the “registration approach” is the correct interpretation of §411(a), and that “registration” means action taken by the Register of Copyrights.

The Court explained that the first §411(a) sets forth the rule that an action for infringement cannot be filed until registration of the copyright has been made, while the second sentence provides an exception to the rule.  The second sentence states that if a copyright application has been submitted to the Copyright Office, but registration has been refused, the applicant can file an action for infringement if they provide notice of the action and a copy of the complaint to the Register of Copyrights.   The Court reasoned that if “registration” meant application, then the second sentence would be superfluous; an applicant could just file suit as soon as they filed their copyright application.

The Court said that the third sentence of §411(a) further supports the “registration approach.”  That sentence provides that the Register of Copyrights may optionally join an action with respect to the issue of registrability of the copyright. According to the Court, this sentence would be meaningless if a suit could be filed before the Register had acted on the copyright application.

The Court noted that other sections of the Copyright Act support this interpretation.  For example, §411(a) refers to examination of the application by the Register of Copyrights, and includes the steps of determining whether the work is copyrightable and deciding whether to allow or refuse registration. The statutes also provide for preregistration, a specific process which allows an applicant seeking a copyright for a work for which predistribution infringement is a risk (such as a film or musical composition) to receive a limited review by the Copyright Office and the right to file an infringement action prior to registration.

Fourth Estate argued that an applicant may run out of time to file suit while waiting for the Copyright Office to register their copyright.  The Court found this argument unpersuasive, pointing out that the average time to obtain a copyright registration is about seven months, leaving plenty of time left in the three-year statute of limitations, and that, in certain cases, an applicant can request expedited processing.

So, the message of this case is clear: the best practice for copyright owners in California, and throughout the U.S., is to file an application to register their copyright as soon as possible for any work for which they might, at some time in the future, need to file an infringement suit.

Companies have a number of tools available to them to help protect their intellectual property, including trade secret and other proprietary information that give them a competitive advantage. Many employers utilize detailed provisions in their employee handbooks and employment agreements to protect this information. One key provision has been the use of coworker non-solicitation provisions that prevent a departing employee from seeking to “raid” his or her former coworkers to join him or her at their new place employment, usually a business competitor.

Generally, these provisions state that an employee agrees during their employment, and for some period after their employment ends (usually one year), that he or she will not solicit any former coworkers to seek employment with their new employer. Now, some recent case law has brought the use of these non-solicitation provisions into question as possibly violating section 16600 of California’s Business and Professions Code, which prohibits the use of non-compete provisions except in certain limited circumstances.

For years, California courts have recognized the right of employers to use non-solicitation provisions in employment agreements to prevent employees from “soliciting” their coworkers to join them at a new employer.  For instance, in 1985, a California appellate court in Loral Corp v. Moyes, 174 Cal.App.3d 268 (1985), held that a non-solicitation of fellow employees provision in an employment agreement was lawful because the co-workers were free to seek employment with a competitor, they just couldn’t be contacted first by the departing employee. (As opposed to non-solicitation provisions that have been routinely upheld, courts have held that “no-hire” provisions, i.e. that a departing employee could not hire a former co-worker, have been held unenforceable as an invalid non-compete in violation of section 16600.)

The enforcement of non-solicitation of co-worker provisions remained relatively consistent until November 2018 when a court in AMN Healthcare, Inc. v. Aya HealthCare Services, Inc., 28 Cal.App.5th 923, granted judgment against an employer who was attempting to enforce a co-worker non-solicitation provision against former employees. In AMN, the departing employees were recruiters for temporary nurses who left AMN to join a competitor in the industry. AMN sued the competitor and former employees claiming they had violated a contractual provision not to solicit or recruit their former co-workers, i.e. the nurses being hired for temporary nursing assignments.

The Court affirmed summary judgment in favor of the competitor and former employees, holding that the co-worker non-solicitation provision violated section 16600 of the California Business and Professions Code, which provides that agreements that restrain a person’s trade or profession are unenforceable.  The AMN Healthcare Court relied heavily on the California Supreme Court’s ruling in Edwards v. Arthur Andersen LLP, 44 Cal.4th 937 (2008), which broadly struck down non-compete agreements preventing employees from competing against their former employers.

It remained an open question following the AMN Healthcare decision whether other courts would follow its holding concerning the unenforceability of an employee non-solicitation provision.  For instance, would other courts limit the AMN holding and decline to follow it because:

(1) The former employees who were being sought to be restrained by AMN were recruiters such that any prohibition on solicitation would necessarily restrain them in their profession as recruiters; or

(2) The former co-workers they were targeting for recruitment were temporary nurses who served short assignments so that enforcing the non-solicitation provision could limit those employees’ ability to obtain new work after their temporary assignments ended.

We did not have to wait long to see what other courts would do. Two months after the AMN decision, another court followed the lead of the AMN Healthcare Court and is allowing a claim to go forward attacking a co-worker non-solicitation provision.  In Barker v. Insight Global, LLC (Jan. 11, 2019 N.D. Cal.), Judge Beth Labson Freeman recently reversed herself and granted the plaintiff-employee’s motion for reconsideration to allow him to state a claim as a class representative against his former employer for the use of co-worker non-solicitation provisions in its employment agreements.

Judge Freeman held that the recent AMN Healthcare decision (her initial order dismissing the claim came three months prior to the AMN Healthcare decision) was likely consistent with the current state of California law regarding these non-solicitation provisions, especially in light of the Edwards v. Arthur Andersendecision. She denied the defendant-employer’s motion to dismiss the former employee’s claim and ruled that plaintiff should be allowed to present a claim that the use of an employee non-solicitation provision in his employment agreement violated section 16600 and was therefore an unfair business practice.

The Barker case is still in the early stages but employers should be concerned that a court has decided to follow the holding of the AMN Healthcare decision. In light of these recent developments, employers should carefully review any non-solicitation provisions in their employment agreements with their attorneys to determine whether they are at risk at facing claims or a result similar to those in the AMN Healthcare and Barker cases.

As we previously wrote on this blog, Alfonso Ribiero, better known as Carlton Banks from the Fresh Prince of Bel Air filed suit against multiple videogame publishers, including the publisher of NBA 2K and Fortnite for featuring avatars that perform his signature “Carlton Dance.” Ribiero’s case, however, may have just encountered a dispositive roadblock.

Last week, a letter from Saskia Florence, a supervisory registration specialist with the US Copyright Office, to Mr. Ribiero’s attorney, was uncovered. There, Ms. Florence refers to the Carlton Dance as a “simple dance routine” that is “not registrable as a choreographic work.” Describing the choreography, Ms. Florence stated:

The dancer sways their hips as they step from side to side, while swinging their arms in an exaggerated manner. In the second dance step, the dancer takes two steps to each side while opening and closing their legs and their arms in unison. In the final step, the dancer’s feet are still and they lower one hand from above their head to the middle of their chest while fluttering their fingers.

Accordingly, Ms. Florence concluded, “The combination of these three dance steps is a simple routine that is not registrable as a choreographic work.”

Based upon this refusal, the defendants have filed motions to dismiss the complaint. Specifically, the defendants argue that the mark is not entitled to copyright protection, as Ms. Florence, whose conclusion on behalf of the Copyright Office is entitled to substantial deference, likewise concluded. Defendants also contend that Mr. Ribiero may not be the true owner of the work, as it was created for the Fresh Prince of Bel Air and again used on Dancing with the Stars, both of which raise questions regarding whether the network owns the copyright as a work made for hire. Accordingly, Defendants requested that the matter be dismissed with prejudice.

We’ll keep an eye on the docket and when Mr. Riberio files his opposition to the motion to dismiss, we’ll provide another update.

In Continental Circuits LLC v. Intel Corp. et al., case number 18-1076, the U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, recently clarified the rules for the incorporation of a limitation from a patent’s specifications into the claims during claim construction.  In the case, Continental sued Intel Corp.; its supplier, Ibiden U.S.A. Corp.; and Ibiden U.S.A. Corp.’s parent company, Ibiden Co. Ltd. (collectively, “Intel”), for patent infringement on four patents in the District of Arizona.

All four patents at issue in the case share a common specification and are directed to a “multilayer electrical device . . .having a tooth structure” and methods for making the same.  According to the patents, multilayer electric devices “suffer from delamination, blistering, and other reliability problems,” especially when “subjected to thermal stress.”  The inventions of the patents purport to solve this problem by “forming a unique surface structure . . . comprised of teeth that are preferably angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a second layer.”  The specification further explains that the increased surface area of the teeth improves the adhesion of the layers to one another.  The patents additionally “theorize[] . . . that the best methods for producing the teeth [are] to use non-homogenous materials and/or techniques . . . such that slowed and/or repeated etching will form teeth instead of a uniform etch.”  The specification then explains that “[o]ne technique for forming the teeth is . . . the swell and etch or desmear process, except that contrary to all known teachings in the prior art . . . a ‘double desmear process’ is utilized.”  It continues by explaining that “the peel strength produced in accordance with the present invention is greater than the peal [sic] strength produced by the desmear process of the prior art, i.e., a single pass desmear process.”  The specification then discloses that “[i]n stark contrast with the etch and swell process of the known prior art . . . a second pass through the process . . . is used” because it “make[s] use of [the] non-homogenaities [sic] in bringing about a formation of the teeth.”

All of the asserted claims include claim limitations regarding the “surface,” “removal,” or “etching” of “a dielectric material” or “epoxy,” and their construction depends on resolving whether they should be limited to a repeated desmear process.  The district court construed the “surface,” “removal,” or “etching” claims of the dielectric material to be “produced by a repeated desmear process.”  The district court concluded that Intel had “met the exacting standard required” to read a limitation into the claims.  Specifically, the district court found that the specification not only “repeatedly distinguishe[d] the process covered by the patent from the prior art and its use of a ‘single desmear process,’” but also characterized “the present invention” as using a repeated desmear process.  Additionally, the district court found that the prosecution history corroborated its construction.

In reviewing the claim construction, the Federal Circuit first noted that claim construction is ultimately a question of law that it reviews de novo.  Any subsidiary factual findings based on extrinsic evidence “must be reviewed for clear error on appeal.”  But “when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law,” which the Federal Circuit will review de novo.

The Federal Circuit acknowledged the difficulty in drawing the “fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.”  To avoid improperly importing limitations into the claims, “it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.”  In contract, to disavow claim scope (or, in other words, limit the claims via the specification), “the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”

The Federal Circuit then found that the district court erred in limiting the claims to require a repeated desmear process.  Based on its review of the specification, none of the statements relied upon by the district court rises to the level of “a clear and unmistakable disclaimer.”  Thus, absent “clear and unmistakable” language suggesting otherwise, the Federal Circuit concluded that the aforementioned statements do not meet the “exacting” standard required to limit the scope of the claims to a repeated desmear process.

The district court had also found that the prosecution history further supported its claim construction; however, the Federal Circuit disagreed that such a clear disavowal existed in the prosecution history.  Similar to disclaimers in the specification, “[t]o operate as a disclaimer, the statement in the prosecution history must be clear and unambiguous, and constitute a clear disavowal of scope.”  But, according to the Federal Circuit, the cited statements in the prosecution history do not clearly and unmistakably disavow any claim scope.

Next, in order to read a process limitation into a product claim, it must meet one more criterion.  Generally, “[a] novel product that meets the criteria of patentability is not limited to the process by which it was made.”  “However, process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention.”  Thus, for the same reasons that the statements relied upon by the district court do not show that the patentee clearly and unmistakably disavowed claim scope, they also do not make clear that the repeated desmear process is “an essential part” of the claimed electrical device having a tooth structure.

Finally, in some instances, district courts are authorized “to rely on extrinsic evidence, which ‘consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.’”  However, “while extrinsic evidence ‘can shed useful light on the relevant art,’” it is “less significant than the intrinsic record in determining the ‘legally operative meaning of disputed claim language.’”  Here, the district court acknowledged that the extrinsic evidence, which consisted of documents authored by the inventors, was “not reliable enough to be dispositive,” but “provide[d] helpful corroboration.”  However, similar to the intrinsic evidence, those statements reflect use of the preferred embodiment but give the public no indication that they have any limiting effect.  Therefore, because the Federal Circuit already determined that the intrinsic evidence does not support reading a repeated desmear process into the claims, the “less reliable” extrinsic evidence, which even the district court acknowledged was “not reliable enough to be dispositive,” does not require otherwise.

Accordingly, the Federal Circuit determined the claim terms should not be limited to requiring a repeated desmear process, and instead, should be given their plain and ordinary meaning.

Generic trademarks are those which, due to their popularity and/or common usage, have become synonymous with the products or services. Such trademarks include Kleenex, Band-Aid, Jeep, Aspirin, and Cellophane. Such marks, generally, cannot be federally registered or protected under the Lanham Act due to the marks direct reference to the class of product or service it belongs to. In other words, it fails to distinguish the good or service from other goods or services in the marketplace.

Breaking ways with this long-standing body of law, the U.S. District Court for the Eastern District of Virginia reversed a Trademark Trial and Appeal Board (“TTAB”) decision denying trademark applications for BOOKING.COM. The plaintiff in that action previously filed a federal trademark application for BOOKING.COM for both travel agency services and for making hotel reservations for others in person and via the internet. Plaintiff already had an international trademark registration for the same services pursuant to the Madrid Protocol.

During the USPTO’s review the plaintiff argued that the marks had acquired distinctiveness, but the USPTO refused to register the mark due to its genericness. The plaintiff appealed the decision to the TTAB, which affirmed the USPTO’s refusal. In doing so, the TTAB stated that “.com” did not impact the genericness.

On appeal, the Eastern District of Virginia first examined whether BOOKING.COM is generic. In doing so, it first analyzed BOOKING and .COM separately before analyzing them in conjunction. The Court found that that BOOKING is generic for the relevant services. When analyzing BOOKING.COM as a whole, however, plaintiff argued that the combination of the generic word BOOKING and .COM created a unique designation of the source of the services.

The Court found that when combined with a second-level domain, top-level domains, such as .com, typically have source identifying significance. The Court further held that second-level domain and top-level domain combinations generally create descriptive marks that are protectable upon acquiring distinctiveness. The reasoning stemmed from the Court finding that a top-level domain plus a second-level domain equals a domain name, which is unique and can only be owned by a single entity.

Next, the Court analyzed whether BOOKING.COM had acquired distinctiveness. Finding that the plaintiff offered sufficient evidence that consumers identify BOOKING.COM with a specific source, not just a reference to services provided, the Court held that BOOKING.COM had acquired distinctiveness, but only as to hotel registration services, not travel agency services. Accordingly, the Court ordered the USPTO to register BOOKING.COM as to those services, and remanded the matter to the USPTO to determine whether the design and color elements in two of the applications, in conjunction with the protectable word mark, were eligible for protection.

So, what does this mean? In short, it means that although a party may be unable to register its generic mark alone, it may be able to combine the generic mark with a top-level domain to create a registrable trademark. But although this undoubtedly provides some benefit, such trademark owners should heed the Eastern District’s warning that such marks will not be according broad protection.

For those of you that watched the red carpet happenings at last year’s Golden Globe Awards, you may have noticed the “Fiji Water Girl”, a model standing ready to keep Hollywood glitterati hydrated with bottles of Fiji water, photobombing numerous shots of celebrities.  Her presence on the red carpet created a social media firestorm and the Fiji Water Girl – a model named Kelly Steinbach – garnered instant and substantial notoriety.  Now this notoriety has evolved into a lawsuit, pitting Steinbach against the very brand of water she was representing.  It appears that Fiji created numerous life-size cardboard cutouts of Steinbach from a photo of her on the red carpet at the Golden Globes holding a tray of Fiji water and placed them at grocery stores and at other retail point-of-sale locations.  In fact, People Magazine published a picture of John Legend leaving a Beverly Hills grocery store with the cardboard cutout of Steinbach in the background next to a display of Fiji water.  Steinbach claims that Fiji never had her permission to use her likeness in such a manner and such use by Fiji violates her right of publicity.

California Civil Code Section 3344 states, in pertinent part:

Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent….shall be liable for any damages sustained by the person or persons injured as a result thereof.

The entire purpose of 3344 is to allow individuals to control any commercial interest they may have in their persona.  That said, every use of a person’s likeness in connection with a commercial product or service is not actionable.  Section 3344(e) states that:

[I]t shall be a question of fact whether or not the use of the person’s name, voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising as to constitute a use for which consent is required.

The statute also contains a “safe harbor” for use in any news, public affairs, or sports broadcast or any political campaign.

Most contested right of publicity cases address the fine line between commercial use and a protected First Amendment use.  Although the Supreme Court provided guidance in Comedy III Prods., Inc. v. Gary Saderup, Inc. for determining the difference between protected First Amendment speech and the actionable usurpation of an individual’s right of publicity, balancing tests are never as clear as practitioners would like them to be.

Here however, it seems like a clear case, but like any good Hollywood movie, there’s always a twist.  Fiji claims that the lawsuit is frivolous and without merit.    Fiji claims that “[a]fter the Golden Globes social media moment, [it] negotiated a generous agreement with Ms. [Steinbach].”  Fiji even claims there is a videotape of Ms. Steinbach signing an agreement; Steinbach claims that the agreement was not really an agreement and the signing was a staged event.  Fiji claims that Steinbach “blatantly violated” the agreement between them and stated that it’s confident that it will prevail in Court.

Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for patent in the United States.”  This limitation on patentability is often referred to as the “on-sale” bar because it prohibits, or bars, an inventor from obtaining a patent when the invention was on sale more than one year before the patent application was filed.  In fact, all patent statutes since 1836 have included an “on-sale” bar provision.  The motivation behind the bar comes from the U.S. Constitution, which authorizes Congress “[t]o promote the Progress of Science and useful Arts.”  Long ago, the Supreme Court determined it would impede “the Progress of Science and useful Arts” to permit an inventor to sell his or her invention while keeping the secrets of his or her invention from the public and then later get a patent when faced with the danger of a competitor.  This would improperly offer a premium, such as longer protection than the standard patent term, “to those who should be least prompt to communicate their discoveries.”  See Pennock & Sellers v. Dialogue, 27 U.S. 2 Pet. 1 1 (1829).

But what does it mean for an invention to be “on sale”?  Does the sale have to make the invention available to the public?  Does the invention have to actually be sold? Does merely offering the invention for sale trigger the on-sale bar provision?  Interpreting the pre-AIA, “on-sale” bar, the Supreme Court determined that an invention was “on sale” when two conditions are met.  First, the invention is “the subject of a commercial offer for sale,” and second, the invention is “ready for patenting.”  In other words, a mere offer for sale triggers the “on-sale” bar whether or not the sale is made.  Further, the sale or offer for sale does not have to make invention available to the public for the invention to be “on sale” and thus subject to the “on-sale” bar provision.

The AIA, however, modified the language for the “on-sale” bar provision.  Under the AIA’s 35 U.S.C. § 102(a)(1), a person shall be entitled to a patent unless the claimed invention was “… on sale, or otherwise available to the public before the effective filing date of the claimed invention.”  This change raised a question as to whether, under the AIA, a sale has to make the invention available to the public to trigger the AIA version of the “on-sale” bar.  In other words, does the phrase “otherwise available to the public” limit the types of sales that trigger the bar or can “secret sales,” such as sales under a non-disclosure or confidential agreement, still trigger the bar as they did under the pre-AIA, “on-sale” bar.

On January 22, 2019, the Supreme Court answered these questions in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.  Specifically, in Helsinn, the Court addressed “whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention ‘on sale’ within the meaning of § 102(a).”  The Court unanimously held that a confidential sale to a third party triggers the “on-sale” bar provision.  Thus the AIA did not alter the meaning of “on sale.”

Looking at the facts in Helsinn and the Court’s reasoning provides further insight.  Specifically, Helsinn owns four patents, which all claim priority to a provisional patent filed in 2003, related to the drug palonosetron used to treat chemotherapy-induced nausea.  One of the patents, the ‘219 patent, is governed by the AIA and the other three are governed by pre-AIA law.  Nearly two years before filing the provisional patent application, Helsinn entered into two agreements with MGI Pharma, Inc. (“MGI”) whereby MGI would purchase the drug from Helsinn and keep all proprietary information received under the agreements confidential.  Helsinn and MGI announced the agreements in a joint press release, and MGI reported the agreements in its Form 8-K filing with the SEC.  However, they did not disclose specific dosage formulations covered by the agreements.

Teva Pharmaceuticals USA, Inc. (“TEVA”) sought FDA approval to market a generic version of the anti-nausea drug.  In response, Helsinn sued TEVA for patent infringement.  TEVA argued the ‘219 patent was invalid because the invention was on sale more than one year before Helsinn filed its provisional patent application.  The District Court agreed with TEVA concluding that “an invention is not ‘on sale’ unless the sale or offer in question made the claimed invention available to the public.”  On appeal, the Federal Circuit reversed finding that “’if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale’ to fall within the AIA’s on-sale bar.”  Therefore, “[b]ecause the sale between Helsinn and MGI was publicly disclosed, it held that the on-sale bar applied.”

The Supreme Court then “granted certiorari to determine whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential” triggers the on-sale bar provision.  The Court pointed out that the AIA “retained the on-sale bar and added the catchall phrase ‘or otherwise available to the public.”  Therefore, the question was whether the altered language changed the meaning of the “on sale” bar.  The Court pointed to the well-settled, pre-AIA precedent that sales and offers for sale did not have to be public to trigger the on-sale bar provision.  In fact, the Court acknowledged that the Federal Circuit had explicitly recognized the implicit precedents of the Supreme Court that secret sales can invalidate a patent under the pre-AIA “on sale” bar.  “In light of this settled pre-AIA precedent on the meaning of ‘on sale,’” the Supreme Court presumed “that when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase.”  “The new § 102 retained the exact language used in its predecessor statute (‘on sale’) and, as relevant here, added only a new catchall clause (‘or otherwise available to the public’).”  The Court determined that merely adding “or otherwise available to the public” was “simply not enough of a change” to “conclude that Congress intended to alter the meaning of the reenacted term “on sale.”  Therefore, the Court held that “an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential” can bar patentability under the AIA “on sale” bar provision.