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.
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.
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.
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.)
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.
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.
In July, this author wrote about Lenz v. Universal which, at the time, was pending before the 9th Circuit. On September 14, 2015 the 9th Circuit came down with a ruling which answered whether a copyright owner must consider fair use before proceeding with a takedown notice under the DMCA, and, if so, what are the consequences for failing to do so.
The facts of Lenz are fairly simple. Lenz posted to YouTube a very short video of her young child dancing to a Prince song playing in the background. At the time, Universal Music Publishing was managing Prince’s music publishing. An attorney at Universal manually reviewed the posting but acknowledged that he did not consider whether the Lenz video was fair use. Universal sent a DMCA takedown notice to YouTube and YouTube removed access to the video. Most normal takedown situations end there; however, Lenz was upset, and, after trying and failing to remedy the situation herself, sought the aid of attorneys at the Electronic Frontier Foundation. Continue Reading
On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name. The suit started back in 2012 when a patron of Costco in Huntington Beach, California decided to reach out to Tiffany to express her disappointment in Tiffany offering its rings for sale at Costco. She also stated that the rings were being promoted on signs within the store as Tiffany diamond engagement rings. After receiving the complaint and knowing that it did not sell its rings through Costco, Tiffany launched an investigation revealing that the Huntington Beach Costco was in fact displaying diamond engagement rings in a case labeled with the word Tiffany. The investigation also revealed that the Costco salespeople were referring to them as Tiffany engagement rings. Accordingly, Tiffany took action.
According to the Court’s ruling, prior to the lawsuit, Costco promised that it would remove references to Tiffany from its display case signs and even sent a letter to customers who bought the rings offering a full refund if they were not satisfied. Irrespective of these acts, Tiffany filed suit, ironically enough, on February 14, 2013. In response, Costco filed a counterclaim alleging that Tiffany’s trademarks were invalid because they sought to prevent others from using the word “Tiffany” as a generic description of a type of ring setting. Almost a year and a half later, the Court ruled in favor of Tiffany and against Costco. Specifically, Judge Laura Taylor Swain ruled that the evidence established that Costco had infringed Tiffany’s trademarks by selling engagement rings and had confused consumers by using the word Tiffany in display cases. Judge Swain ruled that “Despite Costco’s arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark.”
The Federal Circuit Court of Appeals has established a new test for “divided” patent infringement. Direct infringement of a method patent exists when a single party performs all of the steps of the claimed method. 35 U.S.C. §271(a). Divided infringement occurs when all of the steps are not performed by a single party, but by two or more parties under circumstances such that one party is still responsible for the infringement.
The law of divided infringement has been a subject of much debate. The question is: should direct infringement be expanded so that a single party is liable for infringement of a method claim even if another party performed some of the steps of the method? Those who say “no” argue that one party cannot infringe a method patent if it does not perform all of the steps of the claimed method, and that any other interpretation is so broad that it would make infringers out of innocent parties. Those who say “yes,” however, argue that infringers can escape liability for patent infringement simply by dividing up the steps of the claimed method among two or more parties.
In its previous decision in this case, a panel at the Federal Circuit had held that a party can be liable for divided infringement if it shares a principal-agent relationship, a contract, or a joint enterprise with the other party who performs some of the steps. On appeal to the United States Supreme Court, however, the Supreme Court vacated that decision and remanded the case to the Federal Circuit, stating that the Federal Circuit’s test for divided infringement may have been too narrow.
As reported in Law 360 and other outlets, the First Circuit has ruled that a chicken sandwich, no matter how amazingly delicious it may be, cannot be copyrighted. A Puerto Rican epicure named Norberto Lorenzana argued that he created the “Pechu Sandwich” which is “a fried chicken breast patty, lettuce, tomato, American cheese, and garlic mayonnaise” while working for a Church’s Chicken franchise in Puerto Rico.
According to Law 360, “[h]e sued the company in 2012, claiming it had misappropriated his intellectual property rights in the ‘recipe’ of the Pechu Sandwich and the name of the item itself, but a district court ruled last year that he couldn’t claim ownership of either.”
Entirely unsurprisingly, the First Circuit agreed. In language that may go down in the annals of law next to such well known sayings as “I know it when I see it” (Justice Potter Stewart) and “falsely shouting fire in a crowded theater,” (Justice Oliver Wendell Holmes) Judge Jeffrey Howard wrote, “a chicken sandwich is not eligible for copyright protection.” Boom.