Tag Archives: Intellectual Property

What the %@#&? Supreme Court Strikes Down Ban on Immoral or Scandalous Trademarks

istock-136562318-trademark.jpg

The Supreme Court struck down the Lanham Act’s prohibition on registering “immoral or scandalous” trademarks in its recent decision in Iancu v. Brunetti. Erik Brunetti is an artist who created a clothing line that uses the trademark FUCT. When he sought to register the mark, the U.S. Patent and Trademark Office (“USPTO”) denied his application, citing the Lanham Act’s prohibition on registering trademarks that contain immoral or scandalous matter. It is not hard to imagine that the mark would bring to mind perhaps the most famous four-letter curse word in American culture. Brunetti appealed and argued that the prohibition violates the First Amendment.

The Supreme Court agreed with Brunetti and held that the Lanham Act’s prohibition on registering immoral or scandalous trademarks is unconstitutional because it discriminates on the basis of viewpoint. By way of example, the Court pointed out how the USPTO registered the mark “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” but refused to register “BONG HITS 4 JESUS” because it “suggests that people should engage in an illegal activity [in connection with worship]” and since “Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use.”

The Supreme Court’s rationale follows the same line of thinking from its decision in Matal v. Tam, two years ago, when the Court held that the ban on registering marks that “disparage” any person living or dead was unconstitutional. In that case, the Court also held that if a trademark registration bar is viewpoint-based, then it is unconstitutional under the First Amendment.

Does this mean that American consumers are likely to see an influx of brand names containing lewd, sexually explicit, and profane slogans? Not necessarily. While the Lanham Act’s prohibition had prevented the registration of immoral or scandalous marks, there is nothing that previously prevented individuals or businesses from using immoral or scandalous marks in commerce and enforcing the mark against potential infringers. Registration simply provides trademark owners with additional, valuable benefits such as the legal presumption of national ownership of a trademark. In other words, the landscape for offensive marks being used in the marketplace is unlikely to change too much, but owners will have an easier time protecting and enforcing these types of marks.

Questions? Let Eric know.

Eric ClendeningEric Clendening is a member of Flaster Greenberg’s Intellectual Property and Litigation Departments. He focuses his practice on intellectual property litigation and commercial litigation, including contract disputes, employment litigation, and other commercial disputes. He also advises clients on protecting and enforcing intellectual property rights online, including the resolution of domain name disputes and matters concerning e-commerce, online speech and conduct, and related intellectual property issues involving trademarks and copyrights.

Stairway to Retrial: 9th Circuit Court of Appeals Cites Error in Led Zeppelin Infringement Ruling

Vintage Radio Microphone with Vinyl Records

In 2016, a California jury decided that Led Zeppelin’s “Stairway to Heaven” did not infringe on Randy Wolfe’s “Taurus”.  However, the 9th Circuit Court of Appeals reviewed that decision and has now called for a do-over, citing reversible error in evidentiary rulings by the trial judge.  In particular, the Court of Appeals stated that the trial judge erred by failing to advise the jury that, while specific elements of a song are not protected, a combination of those elements could be protected, as well as prohibiting Wolfe’s camp from playing the actual recordings.

It has long been accepted that individual notes, chords, scales, rhythms and harmonies, as well as content in the public domain, are not protectable elements of a song.  However, the trial judge, U.S. District Judge R. Gary Klausner, failed to instruct the jury that, while these elements may not individually or separately constitute copyrightable material, a combination of these elements could well be original enough to make out a case for a protectable copyright.  Ninth Circuit Judge Richard Paez stated, in pertinent part:

Nowhere did the jury instructions include any statements clarifying that the selection and arrangement of public domain elements could be considered original. Jury Instruction No. 20 compounded the errors of that omission by furthering an impression that public domain elements are not protected by copyright in any circumstances. This is in tension with the principle that an original element of a work need not be new; rather, it need only be created independently and arranged in a creative way. See Feist Publ’ns, 499 U.S. at 345, 349; see also Swirsky, 376 F.3d at 849. Jury Instruction Nos. 16 and 20 in combination likely led the jury to believe that public domain elements—such as a chromatic scale or a series of three notes—were not protectable, even where there was a modification or selection and arrangement that may have rendered them original.

This error was compounded by the trial court, according to the Ninth Circuit, when it also barred the jury from hearing the actual songs during the trial.

The district court excluded the sound recordings under Federal Rule of Evidence 403, finding that “its probative value is substantially outweighed by danger of . . . unfair prejudice, confusing the issues, [or] misleading the jury . . . .” Fed. R. Evid. 403. Here, the district court abused its discretion in finding that it would be unduly prejudicial for the jury to listen to the sound recordings in order to assess Page’s access to “Taurus.” The district court acknowledged that the recordings were relevant to whether Page had access to “Taurus,” as Page would have heard and allegedly copied a recording of “Taurus.” The district court was concerned, however, that allowing the jury to hear the recordings would confuse them.

While it is understandable for the trial judge to be concerned that listening to both songs in their entirety, when many of the individual elements are not protectable, could confuse the jury, the Ninth Circuit did not feel that this potential prejudicial effect outweighed its probative value.  While not explicitly stated, the Ninth Circuit may well have been suggesting that there would be no prejudice if the parties and their experts do their job in properly explaining the permissible and non-permissible elements.

However, the Ninth Circuit also suggested another reason that the songs should be played to the jury; specifically, that there could be probative value in the jury merely observing the reactions of the parties while the songs are being played.

Although the jury could still draw conclusions and inferences from Page’s demeanor during his testimony, allowing the jury to observe Page listening to the recordings would have enabled them to evaluate his demeanor while listening to the recordings, as well as when answering questions. Limiting the probative value of observation was not proper here, as the risk of unfair prejudice or jury confusion was relatively small and could have been reduced further with a proper admonition. For example, the district court could have instructed the jury that the recordings were limited to the issue of access and that they were not to be used to judge substantial similarity.

It seems inconceivable that Jimmy Page, Robert Plant and/or John Paul Jones are going to have any reaction while listening to the recordings, let alone any reaction that should lead a juror to draw any conclusion.  All of the parties have heard both versions numerous times prior to trial and, thus, there will certainly be no surprise.  The parties will also be even better prepared for testimony during the new trial.  They will be cognizant that any reaction could impact the outcome, as the court has signaled that any reaction is now something to look out for.

As the song goes, “There’s a feeling I get, when I look to the west.”  In this case, that feeling is that playing both songs in this California Federal Courthouse may confuse the jury and lead to a different result.

Questions? Let Jeff know.

Jeff Cohen is a member of Flaster Greenberg’s Litigation, Intellectual Property, Corporate and Real Estate Practice Groups. He has been a trial attorney for more than 23 years, counseling and representing a diverse range of clients in matters related to commercial contracts, shareholder and partnership agreements, trademarks, copyrights, patents, including Hatch-Waxman, insurance coverage, franchise disputes and commercial construction.

Design Patent Damages: Samsung v. Apple

In a high-stakes case between two tech-world giants, the Supreme Court in Samsung Electronics Co. v. Apple Inc. (US 2016) dismissed a $399 million dollar jury verdict in favor of Apple for Samsung’s infringement of Apple’s smartphone design patents.  At issue in the case were several Apple design patents granted as early as 2009 which cover various aspects of the design of the first-generation iPhone including its black, rectangular front face with rounded corners and the distinctive interface displaying a grid of sixteen colorful icons on a black screen.  At trial, the jury found that several Samsung smartphones infringed Apple’s design patents under 35 U.S.C. § 289, which holds the infringer liable for its total profits.

On appeal to the Federal Circuit, Samsung argued that the damages should not be Samsung’s entire profits from selling its smartphones and damages should be limited to the components that are subject to Apple’s patents, in this case, the front face or screen of the smartphone rather than the entire smartphone.  The Federal Circuit upheld the jury verdict and rejected Samsung’s argument explaining that the infringed features are not sold separately to consumers and therefore should not be considered separately from the smartphone for the purpose of determining damages.

To Samsung’s relief, the Supreme Court reversed and held that design patent infringement damages can be calculated based on the overall device or alternatively on a component of the device.  The Court, however, declined to establish a test to determine whether for each design patent involved in the case, damages should be calculated based on the profits from the entire smartphone or merely a component of the smartphone.  The Supreme Court also failed to provide guidance on how to determine what portion of the infringer’s profits are attributable to a specific component or feature of the smartphone.  Instead, the Court remanded to the Federal Circuit for further proceeding.

Despite this decision, Samsung has won the battle but not the war, as the damages are likely to be reduced on remand but will still be substantial.  While design patents are often overlooked or ignored in favor of utility patents, the Samsung v. Apple litigation underscores the importance of including design patents as part of a patent portfolio.  For many products, the design of the product may have a significant impact on consumer opinion that is itself worthy of protection aside from the functional attributes of the product.  Here, Apple’s foresight in protecting the preferred designs of their smartphone allowed the company to win a large damages award over a key competitor, reserving to Apple a particular aesthetic that competitors will now be more careful to avoid imitating.

tassoneFor more information on patents and intellectual property law, contact Tyler Tassone, a member of Flaster Greenberg’s Intellectual Property Department.

Tyler Tassone concentrates his practice on patent and trademark matters. He graduated from Villanova University School of Law, cum laude, and received a Bachelor of Science Degree in Chemical Engineering, magna cum laude, from the University of Virginia. Tyler is licensed to pactice in Pennsylvania and before the USPTO.

New NHL Las Vegas Team Issued Initial Refusal for “Golden Knights” Trademarks, But Registration Is Still Possible

The United States Patent and Trademark Office issued an initial refusal to the new NHL franchise in their efforts to trademark “LAS VEGAS GOLDEN KNIGHTS” and “VEGAS GOLDEN KNIGHTS” – citing a likelihood of confusion with the registered mark “GOLDEN KNIGHTS COLLEGE OF SAINT ROSE.”  Each mark was registered for entertainment services (ice hockey exhibitions) and clothing.

Importantly, this is a common initial outcome when applying for a mark that has competitors in the same market using a similar mark.  While some media sites opted for more incendiary headlines in stating that the trademark has been “denied,” registration is still quite possible as the Vegas franchise is now given six months to respond to the Trademark office’s initial refusal.

Sports teams using the same nickname as one another is nothing new.  There are many examples of professional and college teams sharing the same name – e.g. Boston Bruins (NHL) and UCLA Bruins (college).  The Simpsons weighed in on the subject years ago, poking fun at the overuse of “Wildcats” as a team nickname:

To overcome the initial refusal, the Vegas franchise will need to show, among other things, that likelihood of confusion will not be an issue.  One problem is that “GOLDEN KNIGHTS” is displayed in both marks more prominently than any of the other words or descriptors.  In addition, the College of Saint Rose and the Vegas franchise will be using the marks in connection with the same goods and services – sporting events and clothing sales.

Another problem is that the College of Saint Rose registered the mark in connection with a particular design and stylized type face.  The Vegas franchise attempted to register their mark in standard characters, which would allow them to display the words in any design and type face – meaning that the two marks could be presented and displayed in the same manner, a “likelihood of confusion” issue which is explicitly cited by the trademark examiner in the initial refusal.

In response to the Trademark office, the Vegas franchise will most likely cite the numerous examples of professional and college teams sharing nicknames, as well as professional teams in different sports sharing nicknames – e.g. Arizona Cardinals (NFL) and St. Louis Cardinals (MLB).  In this case, it may also be crucial that the College of Saint Rose does not have an ice hockey team.  The Vegas franchise is also likely to disclaim “Las Vegas” and “Vegas” as unregistrable portions of their marks, because exclusive rights cannot be obtained in wording that is primarily geographically descriptive of the origin of the goods or services identified in the trademark application.

It remains to be seen whether the Vegas franchise will ultimately be successful in registering the “GOLDEN KNIGHTS” marks, but the matter is far from over, as the initial refusal is just the beginning.

For more information on registering trademarks and intellectual property law, contact Eric Clendening, a member of Flaster Greenberg’s Intellectual Property Department.

Eric R. Clendening is a member of Flaster Greenberg’s Intellectual Property and Litigation Departments. He focuses his practice on intellectual property litigation and commercial litigation, including contract disputes, employment litigation, and other commercial disputes. He also advises clients on protecting and enforcing intellectual property rights online, including the resolution of domain name disputes and matters concerning e-commerce, online speech and conduct, and related intellectual property issues involving trademarks and copyrights.

 

 

 

 

Scalia’s Impact on Business Method Patentability

Photo Credit: The Associated Press

Photo Credit: The Associated Press

The passing of Justice Antonin Scalia, one of the most influential jurists of our time, has brought a wave of speculation about current and future U.S. Supreme Court cases. The public attention regarding his replacement mostly focuses on politically charged issues and their ramifications on a presidential election campaign. One less publicly invigorated area of the law that may be affected is patent protection for business methods and computer programs. Although not a concern for the talking heads of CNN or MSNBC, it deserves consideration by the intellectual property legal community.

Viewed broadly, most Supreme Court IP cases in recent years featured a unanimous or nearly unanimous Court. Justice Scalia normally sided with the majority in these IP decisions. However, about half of his dissents occurred in the last three years. Justice Scalia did not often write a majority opinion in IP cases. There were only two in the last 10 years. His most influential IP opinion concerned the declaratory judgment standard in patent cases. MedImmune Inc. v. Genentech Inc., 549 U.S. 118 (2007).

Despite the general conformity within the Court on IP issues, there was a clash on whether business methods are patentable. In Bilski v. Kappos, 561 U.S. 593 (2009), the Court unanimously rejected the patent claims as covering an abstract idea and, thus, falling outside of the scope of 35 U.S.C. § 101. A close reading of the majority and concurring opinions shows that there was a 5-4 split on the whether any business method patent claim should be considered patentable. Further, Justice Scalia was arguably the deciding vote.

Justice Kennedy wrote the majority opinion in Bilski, in which Justices Roberts, Thomas and Alito joined.  Justice Stevens filed an opinion concurring in the judgment, in which Justices Ginsburg, Breyer and Sotomayor joined.  Justice Scalia joined in the Kennedy opinion, but chose to differ on two points within the opinion.  Recognizing the divide, Justice Breyer (joined by Justice Scalia) filed a concurring opinion outlining the areas where there was agreement amongst the Justices.

Justice Kennedy rejected the notion that business methods are categorically excluded from the meaning of “process” under 35 U.S.C. § 101. The opinion, instead, asserted that only abstract ideas were historically excluded from patentability. In contrast, Justice Stevens’ opinion argued that all business method should be unpatentable based on the intent of the Framers, and the history of British and American law. As noted by Justice Breyer, overall the agreement within the Court was essentially that patentability does not extend to anything that produces a useful, concrete, and tangible result. The two points where Justice Scalia took exception to the Kennedy opinion in Bilski each appear to be minor in nature. Although, on those two points he was in agreement with the Stevens group, partially shifting the 5-4 split. Justice Scalia coupled these exceptions by joining Justice Breyer’s outlined points of agreement. Notably, no other Justice chose to join in.

Justice Stevens’ retired in 2010. Hence, the group that categorically opposed business method patents is no longer intact and we do not yet know how Justice Kagan, who replaced Justice Stevens, will rule on this particular issue. However, the Court with Justice Kagan has addressed the patentability issue. The Court unanimously held in Mayo Collaborative Services v. Prometheus Laboratories, 566 U.S. ___, 132 S.Ct. 1289 (2012), that correlation between drug dosages and medical treatment did not become patent eligible when linked with standard tests.  In Association for Molecular Pathology v. Myriad Genetics, 569 U.S. ___, 133 S.Ct. 2017 (2013), a unanimous Court held that a naturally occurring DNA segment is a product of nature and is not patent eligible merely because it has been isolated. Further, the Court reiterated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S.Ct. 2347 (2014), that basic business methods implemented by computers are not patentable. As such, it would appear that the divide in the Bilski decision has not prevented the Court from acting in unison on patentability.

In an interview on CNN not long ago, Justice Scalia said that the most difficult decisions for him to participate were the dull cases, providing patents as an example.  In reality, he never glanced over details within patentability related decisions.  In Myriad, Justice Scalia concurred in part in an otherwise unanimous decision.  The briefly stated reason for the exception was his personal inability to confirm the applicable molecular biology. Although Justice Scalia was not active in the battle over IP in general, one cannot infer a lack of fervor for finding an acceptable dividing line within any related decision.

The Court’s post Bilski decisions appear to define the edges of patentability.  It is not certain that the Court again will be asked to decide on the full scope of patentability for business methods.  If so, Justice Scalia’s replacement may help to draw the line in a different position.

About the Author:

Thomas J. Durling serves as chair of the Flaster Greenberg’s Intellectual Property Department. He has more than 30 years experience handling business and intellectual property issues, with a focus on patent and trademark procurement, merger and acquisition due diligence, business agreement negation, intellectual property litigation and client counseling. He can be reached at 215.279.9902 or thomas.durling@flastergreenberg.com.

For more information on FG’s IP practice, including job opportunities, click here or visit www.flastergreenberg.com.

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