Welcome to the Weintraub Resources section. Here, you can find our Blogs, Videos, and Podcasts, in which Weintraub attorneys regularly provide insights and updates on legal developments. You can also find upcoming Weintraub Events, as well as firm and client News.


The Federal Circuit Breathes Life into the Redskins’ Appeal

If you’re a fan of intellectual property or the National Football League, you may have heard about last July’s ruling in the United States District Court for the Eastern District of Virginia. There, Judge Gerald Bruce Lee affirmed the Trademark Trial and Appeal Board’s ruling that the team’s moniker is offensive to Native Americans, and therefore ineligible for trademark protection under the Lanham Act, which prohibits registration of disparaging marks. This battle was fought over more than 20 years. The effect is that the Redskins can continue to use the mark, but they do not have the trademark protections provided by the Lanham Act. The Redskins, clearly unhappy with this result, have appealed the matter to the Fourth Circuit of Appeal. That matter is currently pending and the opening briefs were recently filed.

In its opening brief, the Redskins immediately attacked the District Court’s ruling that the Redskins’ registration is not entitled to First Amendment scrutiny because registered trademarks are “government speech” and the registration is a government subsidy “program.” Counsel for the Redskins, Quinn Emanuel and Arnold & Porter, argue that this notion is disturbing. Specifically the opening brief states that: “The PTO has registered hundreds if not thousands of marks that the Team believes are racist, or misogynistic, vulgar, or otherwise offensive. By way of example only, the following marks are registered today…DANGEROUS NEGRO shirts… DAGO SWAGG clothing…BAKED BY A NEGRO bakery goods….These are not isolated instances. The government routinely registers pornographers’ marks” as well. These marks are clearly offensive, and like the Redskins mark, racially charged.

The Redskins argued that this is not government speech, nor is the government subsidizing these marks. Instead, the government is a regulator who determines whether a trademark meets certain criteria, such as distinctiveness. And according to the Redskins, because the registration constitutes government regulation, a ban on registering disparaging trademarks unconstitutionally burdens speech based on content and viewpoint; both of which are prohibited by the First Amendment.

When Copying is Not Copyright Infringement

A longstanding battle between Google and the authors of published books has been resolved (at least for now) in favor of Google. The Second Circuit Court of Appeals has held that Google’s use of copyrighted books in its Library Project and Google Books website, without the permission of the authors, is fair use and therefore not copyright infringement. The Authors Guild v. Google, Inc. (2nd Cir. 2015) 804 F.3d 202.

In 2004, Google began its Library Project. Google entered into agreements with some of the world’s leading research libraries, including the University of California, the University of Michigan, Harvard, Stanford, Columbia, Princeton, the New York Public Library, and Oxford. Under the agreements, the libraries submitted certain books to Google which Google digitally scanned, made machine-readable texts, and indexed the texts. Google has now scanned and indexed over 20 million books. Some of the books were copyrighted, while others were in the public domain. Most of the books were out of print, non-fiction books. The digital copies are stored on Google’s servers.

The public can access Google’s database of machine-readable texts through the Google Books website. On the website, the user can search for key words and find all books that include the key words and the number of times the search terms appear in each book. The search results also include a short summary description of each book and may include a link to purchase the book or the names of the libraries where the book is located. The website also offers the user the ability to see up to three snippets (segments of about an eighth of a page) of the text of the book. Searches for different words will turn up different snippets, but one snippet out of every page and one page out of every ten pages of each book are permanently inaccessible to the user (referred to by Google as “blacklisted”). In 2005, Google agreed to remove the snippet feature for any book at the copyright owner’s request. Google does not permit advertising in the Google Books searches and does not get paid for any sales of books.

According to its agreement with the libraries, Google allows each library to download a digital image and a machine-readable text copy of every book that the library has submitted to Google. The libraries are required to follow copyright laws and police their users to prevent violations of copyright laws.

In 2005, the plaintiffs filed a putative class action against Google in the Southern District of New York, alleging copyright infringement. The district court granted class certification, but on appeal, the Second Circuit vacated the decision. The Second Circuit held that the district court should resolve Google’s fair use defense before deciding class certification.

Google moved for summary judgment on its fair use defense. The district court granted the motion in 2013, dismissing the case. The Second Circuit affirmed the district court’s decision on October 16, 2015.

The Court of Appeals explained that “the ultimate goal of copyright is to expand public knowledge and understanding . . . “ The doctrine of fair use, developed by the courts and now codified in section 107 of the Copyright Act of 1976, permits unauthorized copying in certain circumstances in order to promote the expansion of knowledge. Fair use is an affirmative defense, for which the defendant has the burden of proof. The analysis of fair use is not clear-cut, but depends on the particular facts of each case.

In determining whether the fair-use defense applies, courts must consider the following factors: (1) the purpose and character of the use (including commercial versus a nonprofit educational purpose); (2) the nature of the copyrighted work; (3) the amount and substantiality of the work copied; and (4) the effect of the use on the market for the copyrighted work. 17 U.S.C. §107. Courts have emphasized the fourth factor, the effect of the use on the market for the copyrighted work, noting the importance of protecting authors’ rights to profit from their work. The first factor, the nature and character of the use, is also important, especially if the use is for a new or transformative purpose that is not a substitute for the original work.

The Second Circuit applied the four factors of section 107 to Google’s Library Project and the Google Books website to decide whether Google’s use constituted fair use. As to the first factor, the court held that the factor was met because Google’s creation of a digital, searchable database and its provision of snippets of text to the user was a new and transformative use. The possibility that Google might indirectly profit from its Google Books website service was not significant enough to override the transformative nature of its use because the Google search was not a substitute for the original work. The court emphasized that even if Google’s use was commercial, a commercial use is not presumed to be unfair; for example, the copying of copyrighted works in news reporting, book reviews, and parody is done for a profitable purpose, but is almost always fair use. The court pointed out that the reverse is also true; copying done for a nonprofit educational purpose is not presumed to be fair use.

In addressing the second factor, the nature of the copyrighted work, the court said that this factor was rarely dispositive. The fact that the copyrighted works Google copied were nonfiction works did not change the court’s analysis or conclusion.

With respect to the third factor, the amount and substantiality of the work copied, the court explained that the copying of smaller or less significant portions of a copyrighted work is more likely to be fair use. The rationale is that such copying is less likely to be a substitute for the copyrighted work, and therefore, not likely to affect the copyright owner’s profits. However, the fact that Google had copied the entire book was not determinative. The court held that this factor was met because Google did not provide the entire copy to the public, but needed to make a copy of the entire work in order to provide its transformative use (the ability to search for a particular term throughout the entire work and find out how many times the term was used). The court said that Google’s restrictions on the snippet feature were substantial and would prevent the user from obtaining a substitute for the copyrighted work.

The fourth factor, the effect of the use on the market for the copyrighted book, is the most important factor. If the copy serves as a substitute for the copyrighted work, there is no fair use. The court found that Google’s searches and its snippet feature did not provide a substitute for the copyrighted work.

After thoroughly analyzing the four factors of section 107 and considering several other arguments made by the plaintiffs, the court held that Google’s use was a non-infringing fair use. In reaching this conclusion, the court reiterated the beneficial value to the public of Google’s Library Project and Google Books website, describing these uses as “highly transformative.”

The Beef Between In-N-Out Burger and Doordash

Everyone on the West Coast knows In-N-Out Burger. For some of us Californians, the burgers may even be considered a state treasure. Doordash, on the other hand, is much less recognizable. It is an on-demand delivery service that connects its customers with local businesses. According to Doordash, it enables its users to purchase food from merchants and have it delivered within 45 minutes. While providing this service, Doordash delivered In-N-Out food products to its customers all across the nation. Unfortunately for Doordash, this seemingly innocent, and mutually beneficial, conduct resulted in it being sued in the United States District Court for the Central District of California for trademark infringement, trademark dilution, and unfair competition.

In-N-Out filed its complaint against Doordash on November 6, 2015. In the complaint, In-N-Out contends that it has not authorized Doordash to deliver its food products and that Doordash is not its affiliate. Despite these facts, In-N-Out contends that Doordash delivers food from In-N-Out and utilizes a colorable imitation mark, as well as several of In-N-Out’s registered trademarks. According to In-N-Out, the intent of this conduct is to confuse consumers as to Doordash’s authority to deliver In-N-Out’s products.

In-N-Out also contends that despite Doordash’s delivery vehicles being mobile food facilities as defined by the California Retail Food Code, Doordash does not comply with the Food Code requirements.

In-N-Out contends that the requisite likelihood of confusion exists because actual and prospective customers are likely to believe that Plaintiff has approved or licensed Doordash’s use of In-N-Out’s marks. Alternatively, In-N-Out contends that consumers would assume that Doordash is somehow affiliated with In-N-Out. According to In-N-Out, Doordash’s use of the In-N-Out marks not only implies that Doordash sells In-N-Out products, but also that the quality and services are the same as if the consumers had purchased directly from In-N-Out. Now, I find that to be a bit of a stretch, and I’m curious to see how In-N-Out will establish that, but that is its contention. In-N-Out, however, claims that the quality of services offered by Doordash, are nowhere near those of In-N-Out. Specifically, In-N-Out alleges that Doordash does not adhere with the Food Code’s requirements concerning food safety and handling practices.

I suspect that these allegations concerning food safety and handling practices are the driving force behind this lawsuit. Although claims are regularly filed to protect trademark rights, this is an interesting situation when you take a step back. Here, Doordash’s delivery of In-N-Out’s food products to consumers could arguably help In-N-Out’s bottom line by making it available to its consumers who, for some reason, are unable to get to an In-N-Out. It is hard to see how the use of In-N-Out’s marks for this purpose could harm the burger conglomerate. But that conclusion assumes that there are no food safety compliance issues. If those allegations are true, In-N-Out’s objection to Doordash delivering its food seems reasonable. But I have some reservations regarding whether a trademark infringement/dilution lawsuit is the proper vehicle for a resolution.

I am uncertain whether In-N-Out will be able to demonstrate that consumers would actually place the blame for delivery issues, such as cold food, on In-N-Out. I have faith that consumers are more intelligent than that. But with that said, In-N-Out does not have to go that far to prove its case. It only needs to establish that Doordash’s use of the marks creates a likelihood of confusion regarding In-N-Out’s association or approval of Doordash’s services. And that is much easier.

ISPs That Ignore Notices From “Copyright Trolls” Risk Losing DMCA Safe Harbor Protections

Representing copyright owners attempting to enforce online infringement is often routine, but can sometimes prove challenging. This tends to be the case when a content owner is trying to address large scale infringement of one or multiple works. Most often ISPs are cooperative, but on occasion an ISP may resist responding to a content owner when the owner is represented by an organization like Rightscorp — often referred to as “copyright trolls.” Based on the recent ruling by the Eastern District Court of Virginia against Cox Communications, an ISP is taking a huge risk ignoring infringement notices sent by Rightscorp or any similar organization.

In December of 2014, music publishers BMG Rights Management US, LLC and Round Hill Music LP sued Cox Enterprises Inc. for contributory and vicarious copyright infringement. In the complaint the music publishers allege that the ISP waived its immunity from copyright infringement liability under the Digital Millennium Copyright Act (“DMCA”) by disregarding numerous takedown notices sent on their behalf by their agent, Rightscorp, and otherwise failing to terminate the accounts of repeat infringers.

The DMCA was enacted in 1998 to implement the World Intellectual Property Organization Copyright Treaty and to update domestic copyright law for the digital age. In particular, the DMCA established a series of four “safe harbors” that allow qualifying Internet service providers to limit their liability for claims of copyright infringement based on (a) “transitory digital network communications,” (b) “system caching,” (c) “information residing on systems or networks at [the] direction of users,” and (d) “information location tools.” 17 U.S.C. §§ 512(a)-(d). To qualify for protection under any of the safe harbors, the ISP must, among other requirements, adopt and implement a “repeat infringer” policy that provides for the termination of account holders.

Why Business Methods Are Difficult to Patent

Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable. Inventions that fall in these categories are “patent-ineligible,” that is, directed to subject matter that is not eligible to be patented. After the Supreme Court’s key decisions over the last few years in Bilski v. Kappos, 130 S. Ct. 3218 (2010); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), and Alice Corp. Pty. Ltd. V. CLS Bank International, 134 S. Ct. 2347 (2014), the courts have increasingly held computerized methods of doing business unpatentable.

The district court for the Eastern District of Texas, where many patent infringement cases are filed, handled such a case in Kroy IP Holdings, LLC v. Safeway, Inc., 2015 U.S. Dist. LEXIS 69363. In Kroy, the court provides a useful review of the state of the law, starting with the three Supreme Court cases.

In Bilski, supra, decided in 2010, the Supreme Court held that claims to a method for commodities traders to minimize the risk of price fluctuations was an unpatentable abstract idea. The idea of hedging against risks is a common practice in our economy. The Court found that an idea cannot be made patentable by limiting it to a particular field, such as commodities. The Court held that the Federal Circuit Court of Appeals’ previous test for claims that appear directed to abstract ideas, the machine-or-transformation test (which requires a claimed method to be linked to a particular machine or to transform an article into something else in order to be patentable) is one test that can be used, but is not the sole test.

In Mayo, supra, decided in 2012, the Supreme Court held that a method of increasing the dosage of drug in a patient if the concentration of the drug in the patient’s blood was below a certain level (and doing the reverse if it was too high) was an unpatentable law of nature. The Court emphasized that applying a law of nature to a particular field does not make it patentable. The Court also clarified that using a machine, such as a computer, to perform an abstract idea does not make the idea patentable. In reaching its decision, the Court set forth a two-part test to determine whether a claimed invention is patent-eligible or falls within the exception. First, a court must decide if the claim is directed to one of the categories of the exception. Second, if that is the case, then the court must decide whether the other elements of the claim transform the idea into an “inventive concept,” something more than an idea.

In Alice, supra, decided in 2014, the Supreme Court held that a computerized method for limiting the settlement risk in two-party financial transactions, using a computer as a third party intermediary, was an unpatentable abstract idea. Like Bilski’s risk hedging method, this method was a fundamental economic practice. Unlike Bilski’s method, however, the claims in Alice Corp. required the use of a computer. The Court held that the use of a generic computer cannot make an abstract idea patentable.

The Texas court also discussed several Federal Circuit cases, including Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (2014), which involved patent for a method of distributing copyrighted materials over the Internet. On remand from the Supreme Court, after Alice was decided, the Federal Circuit held the claims unpatentable. Under the Mayo test, the court found that the claims were directed to an abstract idea and that the other limitations in the claims did not transform the idea into patent-eligible subject matter.

After discussing these and more cases, the district court concluded that most of the time, district courts have invalidated patents directed to computer-implemented business methods. In considering Kroy’s patent, the court reached the same conclusion. The court said that incentive award systems using a computer are “plainly unpatentable.” With respect to Mayo’s first step, like the claims in Bilski and Alice, the court found that Kroy’s claims were directed to an abstract idea. As to Mayo’s second step, the court found no “inventive concept.” The use of computers and a network, like the Internet, did not make the claims patentable. As the Supreme Court explained in Alice, the addition of a generic computer does not make an invention patentable that would not otherwise have been patentable.

In invalidating Kroy’s patent, the court said that the claims were like many other business method patents: broad and not limited to a particular means, performing standard computer operations. Reiterating a point made by the Supreme Court in Mayo, the court said that such patents have “the potential to foreclose future innovation disproportionately” compared to the inventor’s contribution.

Pacifico Defends its Trademark Rights on Canadian Soil

Another intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”), arguing the latter’s name was confusingly similar to PWB’s various brew-related trademarks. For those who do not know, Cerveceria del Pacifico is the brewery responsible for Cerveza Pacifico Clara, better known as Pacifico. Although the claim concerns numerous PWB marks, the lawsuit seems to center on the alleged similarity between their Pacific Pilsner marks and CDP’s Pacifico marks. After analyzing the merits of this case, I cannot understand why PWB felt the need to pursue this lawsuit. Aside from both marks generally using the word “Pacific,” the marks are vastly different.

First, Cerveza Pacifico Clara  is clearly distinct from Pacific Pilsner. Even if you compare the commonly used name Pacifico to Pacific Pilsner, the marks are distinguishable, albeit slightly more similar. Further, the respective design marks are distinct. Pacifico’s mark is generally presented against a bright yellow background with the words appearing in red and a different shade of yellow. The logo also features a lifesaver encompassing a hill with the port city of Mazatlan’s lighthouse hill, known locally as Cerro Del Creston. In contrast, Pacific Pilsner’s mark is generally presented against a white background with the words appearing in red and iridescent blue. Although the PWB designs vary slightly, they consistently include a sailboat. Based on these descriptions, it should be clear that the marks are patently distinguishable.

Justice Luc Martineau, who presided over the case, disagreed with PWB’s assertions. Justice Martineau said the first impression given by CDP’s mark for Pacifico “is of its obviously foreign origin” and that it’s “highly stylized with many distinctive design elements, including strong and contrasting colours [sic] and font in red, gold, blue, green, and yellow.” Justice Martineau also stated that the mark “differs visually, phonetically, and semantically” from all of the marks PWB uses for its Pacific beers. According to Justice Martineau “There is no resemblance in the design or colour [sic] elements. In short, the overall impression created by the mark is that of an imported beer originating from Mexico.”

Martineau also dismissed PWB’s allegation that CDP committed a fraud on the register when it represented that Pacifico was first sold in Canada as early as April 1986. Dismissing this allegation, Justice Martineau noted that PWB failed to challenge an affidavit from CDP that it first introduced its beers to Canada in 1986, at a Mexican restaurant called Ole Cantina.

Later, in December 1989, Pacifico was first listed with the British Columbia Liquor Distribution branch. Then, in August 1990, a registration protecting the mark was issued. This is important because Justice Martineau found that PWB’s delay of almost 25 years to bring its claims weighed heavily against a finding of likelihood of confusion and eventually ruled in favor of CDP. PWB has subsequently filed an appeal of the decision in the Federal Court of Appeal, but based on Justice Martineau’s ruling, as well as the clear distinction between these marks, the trial court is unlikely to be overturned.

Court Provides Fair Use Guidance On YouTuber’s Use of Viral Video

This copyright case pitted two big YouTube content brands against each other over issues of fair use. On one side is Equals Three, LLC, a YouTube content studio and channel created and owned by Ray William Johnson, an early YouTube content pioneer. The Equals Three channel has over 10 million subscribers and over 3 billion total views making it one of the most viewed channels on YouTube. Equals Three produces YouTube comedy content. A typical program involves a host who gives an introduction to a particular video clip, shows parts of video clips (which are usually shown in edited form and inset within a decorative graphical frame) and tells humorous or provides humorous commentary about the events and people presented in the clip. Each program is roughly five minutes long and typically features three segments, each of which centers around a different video.

One the other side is Jukin Media, Inc. Jukin is a digital media company that primarily acquires user generated video content and distributes and monetizes such content over multiple online platforms and traditional media outlets, produces and licenses. Jukin acquires the user-generated content by using a research and acquisitions team of eleven people to scour the internet for videos likely to become sensationally popular. Once Jukin acquires the rights to user-generated content, it uploads the video to its YouTube channel and its own websites. Jukin makes money from these videos by ad-supported or subscription-based platforms. Jukin also licenses these videos to other digital, television and cable shows.

Jukin claimed that Equals Three unlawfully used ninteen Jukin owned or controlled clips in one or more Equals Three episode. Jukin instated numerous Content ID claims with YouTube against various Equals Three episodes. These claims prevent Equals Three from monetizing the episodes at issue and allows Jukin to receive all advertising revenue related to such episodes. Equals Three filed a complaint for a declartory judgment that its use of Jukin’s videos was fair use.

In determining whether the use of a work is a fair use, courts consider the following factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The Purpose and Character of the Use

This factor measures whether a work is “transformative” in nature; whether it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” The more transformative the new work, the less will be the significance of the other factors that may weigh against a finding of fair use.

Equals Three claims that its episodes are transformative because they are parodies of the Jukin videos. Jukin argues that the episodes are not parodies because they do not critique Jukin’s videos. With the exception of one of Jukin clip, the court disagreed with Jukin. The court held that:

the episodes comment upon or criticize Jukin’s videos…[they] directly respond to and highlight humorous aspects of Jukin’s videos. The episodes do so via the host’s reactions to the videos, jokes, narration, costumes and graphics. The host’s narration does not simply recount what is shown in Jukin’s videos; instead the host makes comments about Jukin’s videos that highlight their ridiculousness by creating fictionalized narratives of how the events transpired, using similes, or by directly mocking the depicted events and people.

However, with regard to one clip – a clip of the first person to obtain an iPhone 6 in Perth, Australia promptly dropping the phone upon opening the packaging – the court did not find Equals Three’s use transformative. Equals Three said it used this footage for the purpose of making two points: (1) don’t be the first person to do something new; and (2) the iPhone 6 packaging is absurd. The court finds that these two “general, broad points” are not directly aimed at criticizing or commenting on the video and thus not transformative.

Nature of the Copyrighted Work

This factor looks at what type of work it is (i.e., is it a creative work or something else) and whether this is a type of work that falls closer to the core of copyright’s protection. In dicta, the court questioned whether the “point and shoot” variety of user generated content is a creative work or a factual recitation (which is not as close to the core of copyright’s protection as is a creative work). Ultimately the court concludes that the nature of the Jukin clips is creative, but the clips’ creative nature is “not particularly important where the new work is highly transformative.”

Amount and Substantiality of the Portion Used

The third factor examines the quantitative amount and qualitative value of the original work used. Jukin argued that while Equals Three may have not used all of the clips, it used the most important parts of the clips. Equals Three argued that it used no more of the clips than was necessary to create its parody episode. The court agreed finding that Equals Three did not use more than reasonably necessary to “convey enough of the events to allow the host’s jokes, comments, and criticisms to make sense to the viewer and resonate.”

Market Harm Through Substitution

This factor examines whether the use harms the potential market for or value of the original work because it has created a market substitute. That is, does the new work diminish demand for the original work by acting as a substitute for it. Market harm cannot be established by allowable commentary and criticism. Also, damage to a licensing market caused by fair use is not recognizable under this factor.

While the transformative nature of Equals Three’s videos makes cognizable market harm less likely, the court was unable to say that it is completely implausible that at least some viewers would substitute Jukin’s videos with Equals Three’s videos. The court noted that both videos are meant to be humorous and it could imagine a fine line between the demand for the humorous original and the humorous new work commenting thereon. Nevertheless, the court found that Jukin failed to show actual evidence of any such harm; and where market harm is hypothetical, this factor is neutral.

Conclusion

Based on the “highly transformative” nature of Equals Three episodes and the fact that Equals Three used only what was reasonably necessary to achieve their transformative purpose, the court found Equals Three’s use of Jukins’ clips (with the exception of one clip) to be fair use.

Yoga and the Copyright Idea/Expression Dichotomy

Over the last half century there has been an explosion in the popularity of yoga in the United States, much of it attributable to Bikram Choudhury, the self-proclaimed “Yogi to the Stars.” In 1979, he published a book titled Bikram’s Beginning Yoga Class, which centered on a sequence of 26 yoga poses and two breathing exercises. Two former students of his started a new type of yoga (hot yoga) which resulted in Choudhury suing them for copyright infringement. On October 8, 2015, the Ninth Circuit issued its opinion affirming the trial court’s summary adjudication as to the copyright claim and finding that the Bikram yoga “sequence” was not subject to Copyright protection.

In 1971, Choudhury came to the U.S. and settled in Beverly Hills, California. With his arrival, he helped popularize yoga in the United States and developed a “sequence” of 26 asanas and two breathing exercises; Choudhury opened a yoga studio where he taught the “Sequence” and eventually published his book, Bikram’s Beginning Yoga Class. In 1979, he registered the book with the U.S. Copyright Office. (In 2002, he registered a compilation of exercises contained in the book using a supplementary registration form that referenced the 1979 book.)

In 1994, Choudhury introduced the “Bikram Yoga Teacher Training Course,” which was attended in the early 2000s by Mark Drost and Zefea Samson. Following their completion of the course, Drost and Samson founded Evolation Yoga, LLC, which offered several types of yoga, including “hot yoga” which was similar to Bikram’s basic yoga system. Evolation acknowledged that hot yoga includes 26 poses and two breathing exercises (like Bikram yoga) and is done for 90 minutes in a room heated to approximately 105 degrees Fahrenheit.

In July of 2011, Choudhury and his Bikram’s Yoga College filed suit claiming, among other things, that the hot yoga system of Evolation violated its copyright. Evolation moved for partial summary judgment as to the copyright infringement claim and the court granted the motion, ruling that the “Sequence is a collection of facts and ideas” which were not entitled to copyright protection. The plaintiffs appealed that decision to the Ninth Circuit.

In affirming the trial court’s decision, the Ninth Circuit found that at its most basic essence, “the Sequence is an idea, process or system designed to improve health.” Because copyright law is intended only to protect the expression of an idea, i.e., “the words and pictures used to describe the Sequence,” and not the idea of the Sequence itself, the Sequence was not subject to copyright protection.

Does Trump Own “Make America Great Again?”

As I frequently mention in my articles, trademark law is a much more prevalent part of the average person’s life than they realize. We are surrounded by the trademarks of numerous companies every time that we step outside, or even when we look around our own homes. However, we would not generally expect for trademark law to be inserted into a presidential campaign. At least, not until Donald Trump threw his hat in the ring.

Since Donald Trump has coined the campaign slogan “Make America Great Again,” he has been quite diligent about protecting his brand. Trump’s army of trademark attorneys have been aggressively threatening companies such as Café Press and an anti-Trump interest group with cease and desist letters ordering that they cease using the mark “Make America Great Again.” Although this is a shock to many of us who are not accustomed to seeing trademark law inserted into the political sphere, it should not come as too much of a surprise given Mr. Trump’s involvement. Donald Trump‘s acute understanding of the power of branding has significantly contributed to his net worth that allegedly exceeds $8.7 billion dollars. So his diligent brand protection is hardly out of character.

Trademark claims have been regularly made at the lower levels of politics, such as in campaigns for local offices, but they are rarely seen at the presidential level. Despite Mitt Romney’s use of numerous creative campaign logos and designs in the 2012 election, none of them were trademarked. To the contrary, Team Obama did not hesitate to trademark its campaign logo utilizing the Obama “O” which symbolized “a rising sun and a new day.” According to the creator of the mark, brand development and design company Sender LLC, “The Sun Rising over the horizon evoked a new sense of hope.” The Obama Campaign felt so strongly about this meaning that the logo was registered with the United States Patent and Trademark office as a trademark. Still this was another exceptional case.

Trump, however, is the first candidate to register a mark utilizing “America.” According to numerous trademark experts, Trump can establish that he has a right to the trademark “Make America Great Again” because the public now associates the mark with him. I tend to agree. What this is really saying is that “Make America Great Again” has acquired secondary meaning in the marketplace as a result of advertising or continued usage. Under United States trademark law, many common phrases cannot be trademarked unless they have acquired such secondary meaning. That certainly seems to be the case here given Trump’s repeated appearances in the red baseball hat bearing the mark. He has also repeatedly utilized the mark during his campaign speeches. The mark has become so commonly associated with Trump that when Tom Brady was seen wearing the hat in the locker room, rumors spread that he was a Trump supporter.

Certain trademark experts have compared Trump’s right to “Make America Great Again” to that of Coke to “It’s the real thing” or Nike to “Just do it.” Logically, allowing such protection makes sense because when the mark becomes so closely associated with a company or an individual there is a “likelihood of consumer confusion” if others are permitted to sell goods bearing the mark. As such, other companies could wrongfully benefit from the goodwill of the individual or company who owns the mark.

Based on this brief analysis, it seems that while Trump’s trademarking of the phrase “Make America Great Again” may be uncommon in the sphere of presidential politics, it is likely permitted under United States trademark law. It remains to be seen whether this business-like mentality will have any effect on Trump’s campaign, but it certainly did not seem to affect the 2008 or the 2012 Obama campaigns. Irrespective of how you feel about Mr. Trump’s political views, you have to admit, the man knows how to protect his brand.

Patent Owners Beware: Don’t Sleep on Your Rights!

Laches, a judicially created defense based on the plaintiff’s delay and prejudice to the defendant, is a proper defense to the recovery of damages in a patent infringement suit, even though the Supreme Court ruled in 2014 that laches does not apply in copyright infringement cases.

A divided en banc Federal Circuit Court of Appeals held in SCA Hygiene Products v. First Quality Baby Products (September 18, 2015) 2015 U.S. App. LEXIS 16621 that Congress specifically provided for a laches defense in the Patent Act, unlike the Copyright Act.

SCA owned a patent for adult incontinence devices; First Quality was a competitor. In 2003, SCA sent First Quality a letter stating that it believed First Quality’s products infringed SCA’s patent. First Quality replied that SCA’s patent was invalid based on a prior art patent. In 2004, SCA filed a petition for reexamination of its patent in the Patent and Trademark Office, citing the prior art patent. In 2007, the PTO upheld SCA’s patent. SCA had not informed First Quality of the reexamination because the reexamination proceedings were public, but First Quality believed that SCA had dropped its accusation in response to First Quality’s letter. During this time, First Quality had made significant investments in its business. SCA knew First Quality was expanding its business, but did not inform First Quality of the reexamination decision. In 2010, seven years after its last communication with First Quality, SCA sued First Quality for patent infringement.

The trial court granted First Quality’s motion for summary judgment on laches and equitable estoppel. SCA appealed. A panel of the Federal Circuit affirmed the trial court’s decision on the laches defense and reversed it on the equitable estoppel defense.

On rehearing before the en banc Federal Circuit, SCA contended that the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014) eliminated laches as a defense. In Petrella, the Supreme Court held that laches is not a defense to a claim of copyright infringement brought within the Copyright Act’s statute of limitations. SCA argued that laches should not apply as a defense in patent infringement cases within the Patent Act’s six-year period for obtaining damages.

The Federal Circuit held that the Patent Act was not like the Copyright Act because the patent statutes expressly provided for both a six-year time limit on the recovery of monetary damages and a defense of laches.

The court explained that laches was codified in 35 U.S.C. §282(b)(1), which sets forth, in general terms, that defenses of “absence of liability” are permitted. The court relied on the commentary of the drafters of the Patent Act, which specifically stated that laches was a proper defense. The court noted that its holding is not new, as courts have interpreted §282 to permit laches as a proper defense to patent infringement claims for decades.

The court next addressed whether laches is a defense only to equitable relief (injunctions) or whether it is also a defense to legal relief (monetary damages). Although the patent statutes do not provide the answer to this question, the court concluded that laches is a defense to all forms of relief, based on this state of the case law in 1952 when the patent statutes were enacted. At that time, courts applied laches to bar both equitable and legal relief, and Congress intended to codify existing law in enacting the Patent Act. In analyzing Patrella, the court explained that the Supreme Court had:

“eliminate[d] copyright’s judicially-created laches defense because Congress, through a statute of limitations, has already spoken on the timeliness of the copyright infringement claims, so there is no room for a judicially-created timeliness doctrine.”

This is in contrast to the Patent Act, which the court explained as follows:

“The statutory scheme in patent law, however, is different. While Congress has spoken on the timeliness of patent damages claims, Congress also codified laches defense in §282. Thus, because §286 provides for a time limitation on the recovery of legal remedies, and §282 provides for laches as a defense to legal relief, the separation of powers concern is not present. . . . Laches therefore remains a viable defense to legal relief in patent law.”

Lastly, the court clarified that laches is a proper defense to a permanent injunction, but not to an ongoing royalty for a defendant’s continuing infringement. The factors considered in laches (the plaintiff’s delay and prejudice to the defendant) are relevant in deciding whether an injunction is appropriate, but the plaintiff’s delay should not bar it from recovering ongoing royalties for the defendant’s current infringement.

The court also distinguished the defense of equitable estoppel from laches. Equitable estoppel is a bar to the entire claim of patent infringement, precluding any relief. This is because equitable estoppel is premised on conduct by the patent owner that demonstrates acquiescence in the defendant’s infringing acts, essentially granting the defendant a license under the patent for the patent’s term.

In concluding, the court said that Congress can certainly change the law if it so chooses, but for now, laches survives. In that case, patent owners should be vigilant in protecting their rights.