Intellectual Property

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Every year about this time, I search the PTO database for any new patents on inventions related to Christmas. This year turned up several. Interestingly, most of the ones I looked at issued at October and November of this year. (Maybe the PTO wanted to give the owners an early Christmas present!)

There are lots of patents for Christmas tree stands.  This year produced two worth mentioning.  The first is U.S. patent no. 10,117,537.  This tree stand has an inner container to hold the tree and the water, and an outer, cube-shaped container that fits around the inner container. The inner container has a spike at the bottom for the tree trunk and clamps around the top to hold the tree upright.  The outer cube is supposed to protect the floor from water leaks.  The patent says that the cube shape is intended to solve a problem of existing tree stands: people trip over the legs of the stand.  This doesn’t quite make sense to me, however, as it’s pretty hard to trip over the legs of a tree stand when the branches of the tree extend well past the stand.

The second tree stand patent is U.S. patent no. 10,123,646.  This tree stand includes a tarp inside it so that the tree can be tipped out of the stand onto the tarp when the tree is ready to be discarded.  It’s a combination of a tree stand and a tarp, so it takes two perfectly useful things and turns them into one not so useful thing.  It looks way too complicated to be practical: it has a hinged, pivoting collar, spurs, a rotating wheel and cylinder, baffles, a cable, restraints, screws, a foot pedal, and a rolled-up tarp.  All of this makes the tree stand far more difficult than necessary. I think the simplest way to take down a Christmas tree is just to take it out of its stand and carry it outside.

Another patent that seems to take an ordinary task and make it more complicated is U.S. patent no. 10,121,127, entitled “System and Method for Processing Group Gift Cards.”  This is software that can be used to manage the purchase of a group gift.  For example, when you and your friends want to chip in to buy another friend a birthday present, someone collects the money from the others and buys the gift. I don’t know what is so time-consuming or complicated about this, and I don’t find it to be a problem.  But the inventors of this invention came up with a solution, so they must think there is a problem.  So, instead of using the old-fashioned method, you can use their software, which is shown in 30 figures and described in 78 columns of text.  Perfectly simple.

One more overly complicated patent is for a pie baking dish.  This is a pie plate that allows you to make a pie with horizontal layers instead of vertical layers.  Standard pie plates can be used to make a vertically layered pie, such as a cheesecake.  All you do is place one layer of ingredients on top of another layer.  A pie with horizontal layers is a pie with concentric circles of ingredients.  It is much harder to make this kind of pie.  Gravity works against horizontal layers.  I’m not sure I’ve ever seen a pie with horizontal layers.  But, in case you want to try making one, these inventors have designed a pie plate to help make it easier.  The pie plate has inner walls to keep the horizontal layers separate, and inner heating channels with vents to cook all of the layers evenly.  I’m not sure how many of us would use this kind of pie plate, but it might be fun to try.

There are some patents that do not describe complicated inventions.  One such patent is a design patent for an artificial Christmas tree.  I’m not a fan of artificial Christmas trees, unless they are used as decorations in addition to a real Christmas tree.  U.S. design patent no. D 832,133 shows a geometrical tree.   U.S. design patent no. D 832,133 shows a geometrical tree that has a central pole and layers of horizontal slats around the pole arranged as branches. The problem with this patent is that it would be fairly easy to design around, by changing the arrangement of the layers or the number of the slats.   Design patents only protect the specific design shown in the drawings; as such, they provide less protection than utility patents.  But, design patents can be very valuable if the specific design is likely to be copied.

Another patent covers a smartphone app connected to a toy telephone system.  The system allows a parent to set up a phone call to their child from Santa, an elf, a reindeer, or another Christmas character.  The app can be used all year long to send personal phone calls to the child. According to the patent, the system helps parents “create the illusion that Santa and his elves are watching [the children] from the North Pole.”  The system is described as a “behavior modification tool which will promote positive behavior in children.”  That sounds pretty serious for a toy telephone system!

I hope you find some fun and interesting gifts to buy this year!

Happy Holidays!

In University of Massachusetts Medical School et al v. L’Oreal SA et al, 1-17-cv-00868 (DED 2018-11-13, Order) (Sherry R. Fallon), the magistrate judge recommended granting a foreign parent company defendant’s motion to dismiss plaintiffs’ patent infringement action for lack of personal jurisdiction where its American subsidiary introduced the alleged accused products into the stream of commerce and the foreign defendant’s corporate structure is not sufficient to establish personal jurisdiction because “mere ownership of a subsidiary does not justify the imposition of liability on the parent.”

The primary plaintiff in the case is the University of Massachusetts Medical School, a public institution of higher education in Massachusetts.  The University of Massachusetts is the assignee of the two patents-in-suit: U.S Patent Nos. 6,423,327 (the ‘327 patent) and 6,645,513 (the ‘513 patent).  Defendant L’Oreal USA is a wholly-owned subsidiary of Defendant L’Oreal S.A., a French corporation headquartered in France.  L’Oreal USA is Delaware Corporation with its principal place of business in New York, New York.  L’Oreal USA develops and manufactures hair care, skin care, cosmetics, and fragrances distributed globally.  L’Oreal S.A. filed a motion to dismiss for lack of personal jurisdiction, amongst other issues considered by the court.

Plaintiffs asserted that the court’s exercise of personal jurisdiction over L’Oreal S.A. comports with constitutional due process requirements under the stream of commerce and agency theories.  Under the stream of commerce theory, a foreign defendant can be subjected to a forum state’s jurisdiction if it “purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its law.”  Plaintiffs argue that personal jurisdiction is appropriate under this theory because L’Oreal S.A. intends for its products to be sold in the United States through its subsidiary L’Oreal USA.  L’Oreal S.A. does not dispute that the Accused Products are sold in Delaware and throughout the United States, but contends that it is not responsible for introducing the Accused Products, which are made and sold by L’Oreal USA in the United States, into the stream of commerce.

The Magistrate found the record does not support plaintiffs’ argument that L’Oreal S.A. introduced the Accused Products into the stream of commerce.  Instead, the court found that L’Oreal USA introduced the Accused Products into the stream of commerce, and L’Oreal S.A.’s corporate structure is not sufficient to establish personal jurisdiction under the stream of commerce theory because “mere ownership of a subsidiary does not justify the imposition of liability on the parent.”  The Magistrate reasoned Plaintiffs must present evidence showing that the parent company is responsible for introducing the Accused Products into the U.S. or Delaware markets.  And, here, the record does not indicate that L’Oreal S.A. had a role in the design, manufacture, marketing, or sale of the Accused Products.  Further, Plaintiffs do not specifically tie the development or sale of the Accused Products to L’Oreal S.A.  As such, the Magistrate found Plaintiffs cannot show that L’Oreal S.A. “placed–or otherwise influenced the placement of-the [ accused products] into either the United States market generally or the Delaware market specifically.”

Plaintiffs also contend that, by owning United States patents and suing to enforce its patents in this and other United States courts, L’Oreal S.A. has purposefully availed itself of the privilege of conducting activities in the forum state.  However, the Magistrate held that “ownership of a United States patent, without more, cannot support the assertion of personal jurisdiction over a foreign patentee in any state.” As such, the Magistrate found plaintiffs cannot prevail on their stream of commerce theory.

Plaintiffs also argued that L’Oreal S.A. is subject to the court’s jurisdiction under the agency theory as well.  Under this theory, a subsidiary corporation’s specific jurisdictional acts are imputed to its parent corporation to satisfy the jurisdictional requirements “where the subsidiary acts on the parent’s behalf or at the parent’s direction.”  The existence of an agency relationship depends on “the degree of control [ ] the parent exercises over the subsidiary.”  To determine whether the parent has the requisite control over the subsidiary to establish an agency relationship, a court will consider the following factors: “the extent of overlap of officers and directors, methods of financing, the division of responsibility for day-to-day management, and the process by which each corporation obtains its business.”

First, Plaintiffs contend that L’Oreal S.A. and its subsidiaries act as a “unified entity” because L’Oreal Group (the overarching entity consisting of L’Oreal S.A. and its subsidiaries) discloses the financial results of the entire Group in a consolidated report, which includes L’Oreal USA’s financial results. However, the Magistrate found “filings [by a parent corporation] presenting the assets, liabilities, and financial earnings of its subsidiaries as one indistinguishable whole do not prove agency.”

Next, Plaintiffs also argue that L’Oreal S.A. and L’Oreal USA “operate as a single entity, particularly for the purposes of designing, manufacturing, and selling the Accused Adenosine Products in the United States.”  However, the Magistrate found Plaintiffs failed to establish that L’Oreal S.A. had control over L’Oreal USA’s day-to-day management and matters of patent infringement.  Specifically, “L’Oreal USA maintains separate licensing and distribution contracts, manufactures and distributes its own products, has its own board of directors, issues separate financial statements, files separate tax returns, and maintains its own workforce from L’Oreal S.A.”  Moreover, L’Oreal USA’s marketing, advertising, customer relations, and “Research and Innovation” departments are separate from L’Oreal S.A.  Because plaintiffs’ allegation that L’Oreal S.A. and L’Oreal USA operate as a single entity controlled by L’Oreal S.A. is not supported by the record, the Magistrate found Plaintiffs’ agency theory also fails.  Thus, the Magistrate found Plaintiffs have failed to establish personal jurisdiction over L’Oreal S.A.

Finally, the Magistrate also found Plaintiffs have also failed to present sufficient factual allegations to justify jurisdictional discovery.  In order to justify jurisdictional discovery, the plaintiff must present “factual allegations that suggest with reasonable particularity the possible existence of the requisite contacts between [the defendant] and the forum state.”  Plaintiffs assert that jurisdiction over L’Oreal S.A. is proper under the stream of commerce and agency theories and based on L’Oreal S.A.’s own contacts with the forum.  But, the Magistrate already found Plaintiffs’ allegations fail to assert with reasonable particularity facts showing that L’Oreal S.A. might be subject to personal jurisdiction.  Therefore, the Magistrate recommended plaintiffs’ request for jurisdictional discovery also be denied.

The San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a public naming contest to determine its new mascot. After the contest had concluded, the Sod Poodles were selected as the new mascot.

Unfortunately, it appears that Panhandle Baseball Club, Inc., the entity that owns and operates the Amarillo Sod Poodles, will not be able to obtain the exclusive right to use Amarillo Sod Poodles or Sod Poodles in commerce without a fight. It turns out that two Amarillo natives, Dusty and Nikki Green, both of whom had been critical of the team’s ownership, filed an intent-to-use (“ITU”) application with the United State Patent and Trademark Office on June 2, 2018, two days after the team name was announced and three days before Panhandle Baseball Club filed its ITU application for Sod Poodles on June 5, 2018, and over five months before Panhandle Baseball Club filed its ITU application for Amarillo Sod Poodles. So as far as filing prior is concerned, the Greens beat Panhandle Baseball Club to the punch.

According to Dusty Green, the team has made three offers to purchase the putative mark, but Green has rejected each of the offers and does not have an intent to sell. Truth be told, although Green seemingly has priority pursuant to his filing date, he does not have a federally registered trademark at this time. Although one must simply have a good faith intent to use the mark in commerce, an opposing party is free to challenge registration of the mark, and in doing so, challenge the initial registrant’s good faith intent to use the mark. Based upon statements issued by the Amarillo general manager Tony Ensor, it seems Panhandle Baseball Club will do exactly that.

“We are aware of this individual and we are following the trademark processes and procedures. We are not at all concerned and will let the process play out,” said Mr. Ensor to MyHighPlains.com. “We could not be more excited and confident about our name, this brand, and our logo! Sod Poodles is our brand and identity. We created it, and our community brought it to life. There is no way we are going to allow an outside individual who has nothing to do with our team try to take advantage of our team and this community.” I could be mistaken, but those sound like fighting words, and as a trademark practitioner, it is my belief that Panhandle Baseball Club will challenge the registration of Greens’ mark on the basis described above.

Practically speaking, it is likely that Panhandle Baseball Club will continue trying to acquire the Greens’ putative rights in the mark in order to avoid protracted and costly litigation. However, if the Greens are set on maintaining ownership of the mark, it seems that Panhandle Baseball Club is prepared for a fight. If I had to guess, I would say that the Greens will eventually sell their putative rights to Panhandle Baseball Club once they realize how expensive this nonsensical proceeding is. But for all I know, the Greens truly intend to utilize the mark in commerce and will stand their ground. Only time will tell, so stay tuned.

The Trademark Trial and Appeals Board’s recent ruling in In re Productos Verde Valle, S.A. de C.V. upholding a trademark examiner’s refusal to register the mark SONIA for “sauces; chili sauce; hot sauce” holds a lesson for those of us that regularly advise clients on the registrability (and usability) of trademarks.  Assuming Verde Valle conducted a trademark search, it’s very likely (if not certain) that the word mark SONIA SONI LIFE IS A RECIPE for “spices, spice blends; spice rubs” would have come up.  If you were representing Verde Valle, would you advise them that this mark will absolutely prevent the registration of their mark?  Or, would you advise that SONIA SONI LIFE IS A RECIPE is likely to be raised by the trademark examiner, but based on the differences in appearance, sound and commercial impression between the two marks, and the difference in the goods covered by the two marks, registration should be possible?  These were the exact same arguments raised by Verde Valle in its appeal to the TTAB.  The Board affirmed the examiner’s refusal to register.

It is understandable that the TTAB found the goods covered by the two marks to be similar.  Both are food flavorings, sold in the same channels of trade (grocery stores) to the same group of consumers.  Plus, the trademark examiner had submitted a number of third-party registrations covering both spices and sauces.  And while Verde Valle argued that its spices were sold as Mexican food while the goods covered by the registered mark were sold as Indian spices, the TTAB pointed out (1) that no such restriction on the scope of the goods, channels of trade or classes of purchasers was included in either the registration or Verde Valle’s application; and (2) certain spices may be used in both Mexican and Indian cuisine.

The interesting part of the decision is the TTAB’s analysis of the two marks.  In support of its argument that the marks are different, Verde Valle relied on standard, well-established holdings:  that marks must be considered in their entireties and not dissected; that the determination of likelihood of confusion cannot be predicated on only part of a mark; that the commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.   In reliance on these principals, Verde Valle argued the shared term SONI is not sufficient grounds on which to deny registration, and that the two marks are distinct in light of the additional terms.

In considering Verde Valle’s arguments, the TTAB acknowledged its obligation to consider the marks in their entireties but also noted that there is nothing “improper in stating that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.”  The TTAB noted that the proper focus of any inquiry into likelihood of confusion “is on the recollection of the average customer, who retains a general rather than specific impression of the marks”  and here, “the average customer includes ordinary consumers seeking food flavorings in the nature of sauces and spices.”

In examining the two marks, the TTAB found the term SONIA to be the most prominent portion of the registered mark.  This should have been no surprise to Verde Valle as the first part of a mark – as long as it is distinctive — is most often (if not always) deemed to be the most prominent part of the mark.  The rationale behind this is that it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.  What likely was a surprise to Verde Valle was the treatment given to the rest of the mark.  In examining its effect on the overall comparison of the marks, the TTAB said that the words LIFE IS A RECIPE “imparts a connotation that simply highlights use of the spices” and contends that consumers would simply ignore them (as well as the other distinctive word, SONI) and believe that Verde Valle’s mark is simply a shortened version of the registered mark, because of “the penchant of consumers to shorten marks.”  (In addressing the TTAB’s treatment of SONI, it stated “likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting other distinctive matter. If an important portion of both marks is the same, then the marks may be confusingly similar notwithstanding some differences.”)

The important lesson here for trademark attorneys who regularly review trademark search reports is to apply an even greater degree of caution when a report reveals a mark that shares an important portion of the searched mark.  In cases where the searched mark and a mark in a report share an exact same word, where this shared word in the first word in each mark, and where the goods are highly similar, it may be wise to caution the client that there is a good chance that registration may not be possible.

The U.S. Court of Appeals for the Federal Circuit was recently tasked with reviewing determinations made by the International Trade Commission (“ITC”) relating to trade infringement claims brought by Converse, Inc. with regard to a number of imported shoes that it alleged infringed on one of its trademarks. Although Converse sneakers have had largely the same appearance since the 1930s, Converse registered a trademark in 2013 relating to the design of its midsole and the toe cap/bumpers on its shoes.  The primary issue before the Federal Circuit was the timing of a second meaning inquiry in connection with the trademark infringement claim in light of the actual trademark registration in 2013.

Section 337 of the Tariff Act of 1930 provides for remedies at the ITC for holders of trademarks against companies and people who import goods that infringe on a valid and enforceable trademark.  Converse brought claims against a number of respondents for trademark violations regarding the importing of various footwear products in 2014.  Although some of the entities defaulted as to the claims, a number contested Converse’s claims to the ITC and received a favorable ruling that they either did not infringe on Converse’s mark, or that the mark was invalid.  Converse appealed that finding to the Federal Circuit which recognized that the primary issue was “whether the mark had acquired secondary meaning” and the timing issues surrounding that determination.

Converse argued that its mark had long ago acquired secondary meaning in that it had been in use since 1932.  The respondents on the other hand contended that Converse did not exclusively use the mark during that time and provided evidence by way of a survey showing that consumers did not necessarily associate the Converse mark with a single source.  The Federal Circuit concluded that the ITC had made several errors in findings against Converse on its trademark infringement claims.

First, the Federal Circuit held that the ITC erred in failing to distinguish those respondents who were alleged to have infringed before Converse obtained its trademark registration in 2013 and those who began afterward.  The Federal Circuit noted that while the Lanham Act does not create trademarks, “it may create some new substantive rights in trademarks unless the trademarks preexist [and] there is nothing to be registered.” Although Converse had secured its trademark registration in September 2013, it claimed that both before registration and after registration acts of infringement violated its rights in the trademark.  The Federal Circuit noted that to establish infringement Converse had to show: “(1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion.”  Because Converse was seeking protection for its mark in the form of unregistered product design trade dress, it had to show “that its mark has acquired distinctiveness, i.e., secondary meaning.”  The problem with the ITC’s decision the Federal Circuit found was that it had not determined the relevant date for determining whether secondary meaning existed.  In essence, the ITC was urging an interpretation that the secondary meaning had not attached at any time.  The Federal Circuit disagreed with this approach and found that it needed, “a specific determination of secondary meaning as of the relevant date” so that a court could determine whether or not there had been infringing activity.

The statutory effect of Converse’s registration of its mark in 2013 was to create a “presumption of secondary meaning which would operate only prospectively from the date of registration.”  While Converse argued that this presumption should apply to the use of its mark since its first use in the 1930s, the Federal Circuit rejected this and held that the statute made clear that the presumption only applies to post-registration conduct.  With regard to any possible infringement that predated the registration of the mark, Converse would be required to establish “that its mark had acquired secondary meaning before the first infringing use by each respondent” without any benefit of the statutory presumption.

The Federal Circuit then turned its attention to the standards that the ITC should have applied in determining whether the mark had acquired secondary meaning.  The Federal Circuit then found that the ITC had applied incorrect legal standards in rendering a finding that the mark had not acquired secondary meaning. In clarifying the standard that the ITC should have used in determining whether secondary meaning had been acquired in the mark, the Court held that the following six factors should be considered: “(1) association of the trade dress of the particular source by actual purchasers (typically measured by customer surveys); (2) the length, degree and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentionally copying; and (6) unsolicited media coverage of the product embodying the mark.”  The Federal Circuit cautioned that the ITC should consider each of these six factors together in determining the existence of secondary meaning.

The Federal Circuit then turned to the issue of the prior use of the mark by Converse and the alleged infringers.  In reviewing the Lanham Act, the Court found that the most relevant evidence would be the prior use in the five years immediately preceding first use or infringement. Thus, given the importance of looking to a five year period, the Federal Circuit instructed the ITC to “rely principally on uses within the last five years.”  This was because the “critical issue for this factor is whether prior use has impacted the perceptions of the consuming public as of the relevant date.”  The Federal Circuit reasoned that “consumers are more likely to remember and be impacted in their perceptions by third party uses within five years and less likely with respect to older uses.”  Thus, uses that predate the five year period should only be considered if they were likely to have impacted a consumer’s perception of the market as of the relevant date.

The Federal Circuit noted a further error in the ITC’s findings in that in determining prior uses by other third parties, it had considered several instances of shoes that had “at most a passing resemblance to the [Converse] trademark.”  The Court noted that many of these examples were missing at least one of the elements of the trademark and that others had been reproduced in poor resolution that prevented any reasonable comparison. Thus, the Federal Circuit instructed the ITC to limit its analysis only to those uses by Converse and its competitors of the “marks substantially similar to Converse’s registered mark.”  The Federal Circuit noted that there was a similar error by the ITC in applying the similarity in its likelihood of confusion analysis.  The Federal Circuit concluded by vacating the ITC’s findings and remanding it for further proceeding.

The Converse decision reiterates the importance of determining the impact of a mark registration date and whether a presumption of secondary meaning attached when dealing with products that have been in use for years.

Some things are not patentable: laws of nature, natural phenomena, and abstract ideas.  The Supreme Court has long held that inventions falling within these categories are not patentable; they are patent-ineligible subject matter.  In 2014, the Supreme Court relied on this principle in deciding Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347.  In that case, the Court invalidated patent for a computerized system for mitigating risks in financial transactions. The Court also established a test for determining patent-eligible subject matter.  Since then, Alice has been used to invalidate many patents, particularly software patents.  Now it has been used to invalidate a patent for ordering pizza.

Ameranth owned four patents for “an information management system” for transmitting menus from a master database to handheld devices.  In 2011, Ameranth filed suit in the Southern District of California against several defendants, including Pizza Hut, Domino’s Pizza, and others, for infringement of the four patents.  The defendants challenged the validity of three of the patents in the Patent Trial and Appeal Board (PTAB).  The PTAB invalidated many of the claims of the three patents, and, in a subsequent appeal, the Federal Circuit invalidated the remaining claims.  All three patents were held invalid on the grounds that they were directed to patent-ineligible subject matter because the invention was an abstract idea.

The defendants challenged the fourth patent in the PTAB, but the PTAB denied the defendants’ petition, so the infringement litigation proceeded in the district court.

Pizza Hut filed a motion for summary judgement seeking a determination that the patent was invalid as an abstract idea.  However, Pizza Hut then settled the case against it, and Domino’s moved for summary judgement on the same grounds.

On September 27, 2018, the district court granted Domino’s motion and held the patent invalid.  The court applied the two-pronged Alice test.  As set forth in Alice, in the first prong, a court must determine whether the claims of the patent fall within one of the patent-ineligible categories (laws of nature, natural phenomena, and abstract ideas).  The court considers whether the patent’s claims are directed to a specific means or method (which would be patent-eligible) or are directed to a result and use generic processes and machines (which would not be patent-eligible).

If the claims fall within a patent-ineligible category, the court must then proceed to the second prong of the Alice test.  The court must determine whether the elements of the claim transform the claim from patent-ineligible subject matter into patent-eligible subject matter.

In applying the first prong of the Alice test, the court noted that the Federal Circuit had previously held that “collecting, analyzing and displaying information,” without more, and “fundamental economic practices…including longstanding commercial practices and methods of organizing human activity” are abstract ideas.  The court said that the Ameranth claims covered a system that configured the information on large paper menus into a wireless handheld device and allowed the master menu to communicate with the handheld devices in real-time.  The court held that the claims were directed to an abstract idea.

The court then went on to address the second prong of the Alice test.  The court considered the elements of the claims (software, hardware, real-time communications, and configuring information into a wireless device), and found that these elements were based on conventional technology and did not constitute an inventive concept.  The court held that none of these elements transformed the abstract idea of the invention into patent-eligible subject matter.  Therefore, the second prong of the test was met.  The court held the patent invalid as directed to an abstract idea.

Ameranth had filed similar suits against other businesses who use these types of ordering systems, including Papa Johns, Marriott Hotels, Starbucks, Apple and Ticketmaster, and the cases are about to go to trial. Now these cases will be dismissed, thanks to Domino’s. Meanwhile, Ameranth intends to appeal.