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The Copyright Act provides that “Registration” of a copyright is a precondition to filing suit for copyright infringement.  17 U.S.C. § 411(a).  We are still trying to figure out exactly when registration occurs.

While copyright registration is voluntary, the Copyright Act provides several incentives for a copyright owner to register a copyright, one of which is the right to enforce a copyright in an infringement action:  17 USC 411(a) provides:

[N]o civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.  In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement .…”

There are two camps of thought splitting the Federal circuit courts on when “registration” takes place with regard to Section 411(a).  The first is that “registration” occurs when a copyright owner files all necessary application materials to the Copyright Office to register a copyright.  The 5^th and 9^th Circuits and various district courts in other circuits have adopted this perspective, relying on the fact that the Copyright Act prescribes that the effective date of a registration is the date on which a proper and complete application was filed.  Because an applicant may sue for infringement whether or not a registration is issued as long as a proper application was filed, courts following the application approach believe the “registration” approach is misguided.  Since an applicant can file suit either way, it is immaterial whether registration is ultimately granted.

The second camp is that “registration” occurs when the Register of Copyrights registers the copyright or rejects the application.  The 10^th Circuit follows the “registration“ approach.  Just this month, the 11^th Circuit made clear that it too will follow the registration approach.

In its decision in Fourth Estate v. Wall Street.com, LLC, the 11^th Circuit explained the rationale behind its support of the “registration” approach.  That case involved a copyright infringement lawsuit over articles appearing on WallStreet.com.  The Copyright Office had not yet processed the copyright applications and Wall-Street.com, LLC moved to dismiss.  The court stated that “the Copyright Act defines registration in Section 410(a) as a process that requires action by both the copyright owner and the Copyright Office; the filing of the application, the payment of the application fee, the examination of the application by the Register of Copyrights, and then either the issuance of the certificate of the notification of the refusal of registration.

Section 410(a) of the Copyright Act provides in pertinent part:

When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office.

The court argued that the use of the phrase “after examination” in section 410(a) makes explicit that an application alone is insufficient for registration.  Further, the court points out that Section 411(a) allows an applicant whose application has been refused to file an infringement suit.  If registration occurred as soon as an application was filed, how could the application ever be refused the court reasoned.

With two Federal circuits clearly split, it is time for the Supreme Court to resolve this issue.

For over 25 years, the Court of Appeals for the Federal Circuit and the United States district courts have interpreted the patent venue statute 28 U.S.C. §1400(b) to allow plaintiffs to bring patent infringement cases against a corporation in any district court where there is personal jurisdiction over that corporate defendant.  The U.S. Supreme Court just overturned that interpretation in TC Heartland v. Kraft Foods.  In some instances, TC Heartland will greatly limit where patent infringement cases can be filed.  In fact, some are predicting that a significant number of the cases filed in the plaintiff-friendly Eastern District of Texas will be dismissed or transferred and that a substantially smaller number of cases can be filed there in the future.

The patent venue statute 28 U.S.C. §1400(b) provides that “[a]ny civil action for patent infringement may be brought in” either “the judicial district where the defendant resides” or “where the defendant has committed acts of infringement and has a regular and established place of business.”  When the defendant is a corporation, the question arises as to where does the corporation reside?  In Fourco Glass Co. v. Transmirra Products Corp., the Supreme Court previously ruled that for purposes of the patent venue statute “a domestic corporation ‘resides’ only in its State of incorporation.” In Fourco, the Court rejected the argument that §1400(b) is subject to the broader definition of corporate ‘residence’ found in the general venue statute, 38 U.S.C. §1391(c).   However, §1391 has been amended twice since the ruling in Fourco.  As amended, §1391 provides that for purposes of venue, a defendant corporation resides in any judicial district where the corporation is subject to personal jurisdiction.

In 1990, the Federal Circuit concluded in VE Holding Corp. v. Johnson Gas Applicance Co. that §1391(c), as amended in 1988, applies to §1400(b) and redefines the meaning of “resides” in §1400(b) to mean that a defendant corporation resides in any judicial district in which it is subject to personal jurisdiction rather than just in its state of incorporation. In 2011, §1391 was amended again to clarify that the statute applies, “[e]xcept as otherwise provided by law,” to “venue of all civil actions brought in district courts of the United States.”  But in its ruling below, the Federal Circuit reaffirmed VE Holding, finding no basis for a change in interpretation after the 2011 amendment.  The Supreme Court just reversed.

Now, for patent cases, a plaintiff will need to show that a particular district court has personal jurisdiction over a corporate defendant and separately show that venue is proper in that district.  To show that venue is proper, the plaintiff will have to show that

• the district court is in the defendant’s state of incorporation or
• the defendant has committed acts of infringement in the judicial district and has a regular and established place of business in that district.

The impact of this ruling will likely be felt greatest in plaintiff-friendly jurisdictions, such as the Eastern District of Texas where approximately 38% of all patent cases were filed in 2016 and where approximately 45% of all patent cases were filed in 2015.  Of those cases, the Eastern District of Texas would be a proper venue for only a small fraction of those cases today in light of the Supreme Court’s ruling.  In fact, we can expect to see a large number of motions to dismiss or transfer pending cases where venue has not yet been waived.  We are also likely to see a rise in filings in jurisdictions, such as Delaware, where many companies are incorporated.

Another impact of this ruling is that a plaintiff seeking to enforce patents against multiple defendants will likely need to file lawsuits in multiple districts rather than be able to bring all of the defendants to a single venue.  There are pros and cons to this effect.  Plaintiffs likely will give even more careful consideration to the merits of their claims before filing suit, given that the cost of litigating in multiple locales will be higher than litigating in a single venue.  Defendants may feel more emboldened to fight, rather than settle, claims they feel are unmeritorious if the venue is more favorable to them.

But where do foreign corporations reside?  Consider a foreign corporation doing business in the United States, such as over the Internet.  What if it does not have a place of business in the United States?  Where does that foreign corporation reside for purposes of venue?  We will have to leave that question for another day.  This ruling only clarified where domestic corporations reside.

“I googled it …” has become ubiquitous in every day conversation. Many of us refer to “googling” as the act of searching the internet regardless of whether we use the Google search engine to do so.  But has our everyday use of the verb “googling” rendered the Google trademark unprotectable?  “Nope,” said the Ninth Circuit in the recent case of Elliott v. Google, Inc., decided May 16, 2017.

In early 2012, one of the Plaintiffs registered more than 750 domain names using the word “Google” to describe various brands and things such as “googledisney.com” and “googleborackobama.net.”  After Google objected, the National Arbitration Forum agreed that these domain names were confusingly similar to the GOOGLE trademark and were registered in bad faith.  It transferred the domain names to Google.  Plaintiffs then filed a lawsuit seeking to cancel the GOOGLE trademark under the Lanham Act.  Plaintiffs argued that because the word “google” had become universally understood to describe the act of internet searching, it had become “generic” and was no longer subject to trademark protection. The U.S. District Court in Arizona rejected this claim and granted summary judgment in Google’s favor. Plaintiffs appealed to the Ninth Circuit.

The Court began by recognizing that generic terms are “common descriptive” names, which people use to describe a particular type of good or services. Because generic terms do not identify the “source of the product” they are generally not protectable under trademark law.  The Court continued by recognizing that over time, brands could become the victim of “genericide,” that is, “when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source.”  The Court provided as examples aspirin, cellophane and thermos as once protected trademarks that had lost their trademark protection over time as the public became accustomed to using these terms in connection with describing a type of product, regardless of who made the product.

However, the Ninth Circuit cautioned that “the mere fact that the public sometimes uses a trademark as a name for a unique product does not immediately render the mark generic … Instead, a trademark only becomes generic when the `primary significance of the registered mark to the relevant public’ is as the name for a particular type of good or service irrespective of its source.”  The Ninth Circuit described this analysis as the who/what test, i.e., whether the relevant public understands a mark as describing the “who” as the maker or provider of a good or service as opposed to whether it understands the mark as the “what” in describing the good or service regardless of who makes or provides it.

In rejecting the Plaintiffs’ claims, the Ninth Circuit began by clarifying that a claim of “genericness” must be made with regard to a particular type of good or service.  In doing so, it rejected Plaintiff’s claim that because “googling” had been commonly used to describe an act, i.e., an internet search, the District Court erred when it limited its inquiry as to internet search engines.  The Ninth Circuit found that this was proper because any claim of genericness must be made in relation to a good or service given the clear language of the Lanham Act.  The Ninth Circuit continued by recognizing that the failure to limit the inquiry to a particular good or service would put at risk those trademarks that were “arbitrary,” i.e., where an existing word is used to identify the source of a good with which it would otherwise have no logical relationship.  For instance, “IVORY” is subject to trademark protection when used in connection with the particular brand of soap, but would otherwise be subject to cancellation for genericness if “IVORY” was used in connection with products made from elephant tusks.

Next, the Ninth Circuit turned to the Plaintiffs’ argument that because the public has used “googling” as a verb, it was no longer subject to protection.  The Ninth Circuit rejected this argument, finding that the use of an otherwise protected mark as a verb does not automatically render it generic.  The Court concluded that Congress, in amending the Lanham Act, specifically acknowledged that a protected mark may be used as both the name for a product, i.e., as a noun, and yet also used with a specific source in mind, i.e., an adjective.  The Ninth Circuit cited a prior case involving Coca-Cola’s trademarks in which it rejected a claim that customers ordering a “coke” were not necessarily referring to a Coca-Cola product.

The Ninth Circuit spoke approvingly of the District Court’s analysis in this regard by referring to both “discriminate verbs” and “indiscriminate verbs” in order to evaluate Plaintiffs’ claims.  The Court had reasoned that a speaker might use “google” in both an indiscriminate sense, i.e., using “googling” to refer to an internet search without regard to the search engine, as well as other times using it in the determinate sense, i.e., using “Google” meaning to search the internet using the Google search engine.  The Ninth Circuit concluded that the District Court properly found that the primary significance of the word “Google” was whether the relevant public related it to the specific search engine as opposed to the more of the generic internet searching term.

In conducting this inquiry, the Ninth Circuit found that the lower court properly concluded that Plaintiff had not met his burden of establishing the genericness of Google.  The Court noted that the Plaintiffs’ bore the burden of proving genericide by a preponderance of the evidence because they were the ones seeking cancellation of the GOOGLE trademark.  Thus, they were required “to identify sufficient evidence to support a jury finding that the primary significance of the word ‘google’ to the relevant public is as a name for internet search engines generally and not as a mark identifying the google search engine in particular.” Here, the lower court had rejected two of the three surveys conducted by Plaintiffs as being unreliable.  The District Court did accept a third survey, which used but was described as the “thermos” study in which a survey respondent was asked: “If you were going to ask a friend to search for something on the internet, what word or phrase would you use to tell him/her what you want him/her to do?” more than half the respondents used the term “google.”  The Court concluded, however, that this evidence did not go any further other than allowing a favorable inference to be drawn that google had both a determinate and indeterminate use.

Plaintiffs attempted to offer evidence concerning dictionary definitions of the term “google” but the Court again found this evidence insufficient given that the definitions referred to both the Google search engine and did nothing more than support the favorable inference already drawn by the District Court.

Finally, Plaintiffs argued that there was no other term to be used to describe the act of “googling,” which was rejected by the Court.  The Ninth Circuit rejected this finding that not a single competitor of Google’s referred to their search engine as “a google.” In short, the Ninth Circuit found that most of the evidence submitted by Plaintiffs to avoid summary judgment was irrelevant to the primary inquiry and affirmed the lower court’s granting of summary judgment in Google’s favor.

For now, it appears that Google’s trademark is safe.  However, give it time and how the public comes to view the term “google,” a court could revisit this issue in the future.

James Kachmar is a shareholder in Weintraub Tobin Chediak Coleman Grodin’s litigation section.  He represents corporate and individual clients in both state and federal courts in various business litigation matters, including trade secret misappropriation, unfair business competition, stockholder disputes, and intellectual property disputes.  For additional articles on intellectual property issues, please visit Weintraub’s law blog at www.theiplawblog.com.