An inter partes review (IPR) is one of the ways a party can challenge a patent in the Patent and Trademark Office. This procedure was added by the America Invents Act, which established a panel of judges called the Patent Trial and Appeal Board (PTAB) to decide IPRs and conduct other procedures used to challenge patents.  An IPR is quicker and less costly than patent litigation. It also allows an accused infringer to attack the plaintiff’s patent without having to defend against a patent infringement claim at the same time.

There is a time limit for filing an IPR.  Pursuant to 35 U.S.C. §315(b), the PTAB cannot grant a petition requesting an IPR if the petition is “filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  While this language seems clear enough, patent infringement defendants sometimes don’t even realize they have missed the deadline and end up trying to argue that the time bar is not so clear. 

The Federal Circuit Court of Appeals, however, has made it even clearer: §315(b) is a strict one-year time bar that begins to run when a party, real party interest, or its privy is served with a patent infringement complaint alleging infringement of the patent sought to be challenged. Click-To-Call Technologies, LP v. Ingenio, Inc., 2018 U.S. App. LEXIS 22839 (Fed. Cir. August 16, 2018).

The Click-To-Call litigation history is complicated by the existence of numerous parties who were merged or acquired by other parties, and a patent that was acquired by one party from another party.   The first patent infringement lawsuit involving the patent in question was filed in 2001.  Ingenio, the defendant in that case, then acquired the plaintiff, and the lawsuit was voluntarily dismissed without prejudice by a stipulation of the parties.  The patent was later acquired by another party, Click-To-Call. In 2012, Click-To-Call sued the original defendant, Ingenio, and several other defendants for patent infringement.

In 2013, the defendants jointly filed a petition for an IPR challenging the patent.  Click-To-Call filed a response claiming that the defendants were time-barred under §315(b) from seeking an IPR because Ingenio had been sued for infringement of the patent in 2001, more than one year before the petition for an IPR was filed.

The PTAB ruled that the IPR was not time-barred because the 2001 patent infringement lawsuit had been dismissed voluntarily without prejudice.  The PTAB’s rationale was that, under Federal Rules of Civil Procedure Rule 41(a), a dismissal nullifies the complaint and leaves the parties as if the complaint had never been filed.

Click-To-Call requested a rehearing before the PTAB, which was denied. The PTAB then issued a decision invaliding a number of the patent’s claims.

Click-To-Call appealed to the Federal Circuit.  After two dismissals by the Federal Circuit and one trip to the Supreme Court, the case was finally heard by the Federal Circuit.

The question before the court was whether a voluntary dismissal of a patent infringement complaint triggers §315(b)’s one-year time bar for filing an IPR.  The court held that it does, vacating the PTAB’s decision in the IPR and ordering the IPR dismissed.

The Federal Circuit held that the language of §315(b) was plain and unambiguous. Id. at *14.  There are no exceptions to the one-year bar; in particular, there are no exceptions for cases that are dismissed voluntarily after the complaint has been served. The court explained, at *15:

“Simply put, §315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events…it is wholly irrelevant to the §315(b) inquiry whether the civil action in which the complaint was filed is later voluntarily dismissed without prejudice.”

Thus, “subsequent events” in the original patent infringement case do not “nullify service of the complaint for the purpose of §315(b)’s time bar.” Id. at *17.

The Click-To-Call decision may have several ramifications. Defendants in patent litigation may be more reluctant to enter into settlements requiring a dismissal without prejudice.  In addition, defendants will be more likely to file IPRs earlier in order to ensure that they don’t miss the deadline.  Parties to pending IPRs filed more than one year after a complaint was filed may end up in a fight over whether this case should apply to their IPR, potentially leading to its dismissal.

Procter & Gamble, the international consumer packaged goods conglomerate, recently filed a slew of trademark applications with the United States Patent and Trademark Office, seeking to register WTF, LOL, FML, and NBD for use in conjunction with certain consumer goods. Now, I suspect most of you are familiar with these acronyms, but if you aren’t, LOL stands for “laughing out loud” and NBD stands for “no big deal.” As for WTF and FML, if you’re unfamiliar with these acronyms, I welcome you to conduct a quick Google search, as I will not be discussing their meanings in this article.

In any event, Procter & Gamble’s attempt to register these trademarks with the USPTO has caused a bit of a stir among casual readers who lack familiarity with United States trademark law. Such readers may, however unreasonably, believe that if Procter & Gamble obtain trademark rights regarding these acronyms, many everyday users will no longer be able to utilize the phrases. But that belief demonstrates a fundamental misunderstanding of the rights conferred by United States trademark law. The truth is, Procter & Gamble doesn’t care if individuals continue to use these acronyms as part of their everyday vocabulary. In fact, Procter & Gamble probably prefers that these phrases stay in use and maintain relevance. After all, that’s the name of the game: finding a word or phrase people are familiar with and associating it with your product. Of course, this assumes that no one else owns the right to use that word or phrase in conjunction with that particular product or other related products. To summarize, trademark law does not give the owner of the mark a monopoly over the name or phrase. Instead, it gives the owner the exclusive right to use that name or phrase in conjunction with specified products.

So, moving on to the next question: will Procter & Gamble be able to register these marks with the USPTO? In short, I don’t see why not. In fact, the USPTO just issued notice of its intent to publish each of the marks for opposition. In plain English, what this means is that the USPTO’s examining attorney, who serves as the gatekeeper for registrable trademarks, has reviewed each of the applications and determined that the marks are entitled to registration and that no confusingly similar marks exist. Now, the marks will each be published in the Trademark Official Gazette, where others will have the opportunity to see, and, if they should choose, oppose the registration of any of the marks on the ground that it is confusingly similar to the opposing party’s mark. If no one opposes the mark’s registration, the USPTO usually issues a registration certificate within 12 weeks and the process concludes with the applicant becoming the owner of a federally registered trademark. It’s unclear if anyone will challenge Procter & Gamble’s putative trademarks, but if the marks made it by the USPTO’s examining attorney without the issuance of an office action, it seems reasonably likely they will sail on to registration without opposition.

Now that it’s clear that Procter & Gamble’s potential registration of WTF, LOL, FML, and NBD will be NBD, and therefore have no bearing on your everyday use of those acronyms, you really have to wonder, what kind of consumer goods will be sold in conjunction with the acronyms WTF or FML? If you’re familiar with the acronyms or Googled them as I suggested above, it’s really an interesting question.

Have you ever had the experience of attempting to register a social media account in the name of your business only to find that your preferred name is taken?  Often, it’s just the case of another business with the same name having registered that account first.  Other times, it’s evidence of what’s come to be known as “Username Jacking”.  Big brands and public figures are highly susceptible to incidents of username jacking.  If you have not yet had to deal with a fake social media account, it’s likely only a matter of time.  Unlike the case with domain names, brand owners or public figures do not have a clear path to a relatively quick resolution.  There is no UDRP corollary for social media usernames.  So what can a brand or public figure do when it has been username jacked?

The first step would be to review the social media platform’s terms of use and utilize whatever internal dispute resolution process it has in place.  Most (if not all) the terms of use provide, at a minimum, a way to lodge a complaint about a false account.  Twitter has clear rules regarding parody or commentary accounts.  For example, Twitter requires that the bio clearly indicate that the user is not affiliated with the subject of the account and incorporate a word such as “parody,” “fake,” “fan,” or “commentary,” and be done so in a way that would be understood by the intended audience.  Additionally, Twitter requires that the account name not be the exact name as the subject of the account.  Other platforms, such as Facebook and Instagram, do not have such clear-cut rules.

If the violation is clear cut – such as in the case where a rogue account is an attempt to impersonate a celebrity or public figure – the platform will promptly shut down the account and likely transfer the user name to the aggrieved party. It gets a bit more complicated where the fake account could be seen as a “gripe” account – an account dedicated to the criticism of certain persons.  (BP Oil had to deal with a gripe Twitter account created in response to the damage caused by the 2010 Gulf of Mexico oil spill.  This rogue Twitter account featured BP’s logo, soiled with oil dripping down its side and tweeted comments such as “Please write your representatives and tell them you’ve forgotten about the Gulf of Mexico.” )

So what is a brand or public figure to do when facing a jacked username on a platform that doesn’t have clear guidelines for parody or commentary accounts, the account owner has been nonresponsive to your correspondence, and,  although it’s not clear that the account is dedicated to criticism, the platform refuses to take action?  Unfortunately, the legal options available at this point all involve filing a lawsuit.

Going directly after the social platform is not the best course of action.  Section 230 of the Communications Decency Act generally provides immunity to social media platforms from lawsuits that seek to treat them as publishers or speakers of content published by its users.  Since going directly after the user can also be challenging if the jacked social media account provides no clues as to the true identity of the user, the first step is usually figuring out the true identity of the rogue account owner.  No legitimate social media platform is going to hand over user account information (even in the face of a threatening legal letter).  In order to obtain that information, you are going to have to serve the platform with a subpoena.

In order to subpoena user information from a social media platform, one must file a John Doe lawsuit alleging relevant causes or action against a “John Doe”.  After the complaint is filed and a case number is assigned, a deposition subpoena would be served on the platform, requesting the username and profile URL, and other identifying information related to the account.

There is always a chance that the social media platform (or the “John Doe” defendant) will file a motion to quash the subpoena and dismiss the case.  If the platform or the Doe defendant establishes that the plaintiff does not have a meritorious basis to its complaint, the court will not require compliance with the subpoena and will also dismiss the complaint.  Thus, making certain the complaint alleges relatively strong causes of action is important.

One potential judicial claim available to a brand victim of a Username Jacking is a trademark infringement claim.  The factors necessary to support a trademark claim of this nature are: (1) was the mark used in a manner likely to confuse consumers, and (2) whether the mark was used “in commerce” (defined as use “in connection with the sale, offering for sale, distribution, or advertising of any goods or services”).  In cases where the account username is exactly the same as the brand, establishing the first factor would be relatively simple.  However, showing commercial use of the allegedly infringed mark by this account may be challenging.  Further, the brand owner could run into a potential issue if the court finds that the account is a “gripe” account.  Courts have also held that use of a trademark for criticism is noncommercial, even if the defendant makes money from the use.

Other Username Jacking victims have sought relief under the Federal Anti Cybersquatting Consumer Protection Act (“ACPA”).  Various law review articles have pontificated that Username-jacking victims would be unlikely to succeed in a cybersquatting claim because (1) the Anticybersquatting Consumer Protection Act (ACPA) only protects domain names, not usernames, and (2) the social platform account holder does not act with bad faith intent to profit in username-jacking situations.

Assuming one could successfully navigate any argument that the ACPA is inapplicable, cases under the ACPA recognize that the establishment of a “gripe” site does not establish the requisite bad faith.  Some federal circuits have different standards for legitimate gripe or parody sites.  For example, in the Tenth Circuit it must be immediately apparent to anyone visiting a parodic website that it was not the trademark owner’s website, while in the Fourth Circuit, the domain name at issue must convey two simultaneous, yet contradictory, messages: that it is the original and that it is not the original and is instead a parody.

If the jacked user account includes content whose copyright is owned by the brand or public figure, one should consider including a copyright infringement claim.  Obviously, such a claim would have to withstand a fair use challenge or claim that the use is for the purpose of criticism, commentary, news reporting, teaching, scholarship or research.

To many, this situation feels very similar to the early days of cybersquating before the availability of the UDRP.  Not having a clear pathway to resolving disputes is not productive for all concerned.  While a UDRP type proceeding for usernames could prove to be a suitable dispute resolution tool, guidelines on what is and is not acceptable as a gripe or commentary account would be a great place to start.

The U.S. Supreme Court’s in TC Heartland v. Kraft Food,  and subsequently the Court of Appeals for the Federal Circuit in In re Cray Inc., addressed where patent litigation can be filed under the patent venue statute, 28 U.S.C. §1400(b).  Specifically, the patent venue statute provides that “[a]ny civil action for patent infringement may be brought in either 1) “the judicial district where the defendant resides” or 2) “where the defendant has committed acts of infringement and has a regular and established place of business.”

In TC Heartland, the Supreme Court limited venue under the first prong explaining a corporation only resides in its state of incorporation.  For plaintiffs wishing to sue corporations in judicial districts outside the defendant’s state of incorporation, the TC Heartland ruling shifted the focus to the second prong of the patent venue statute.  The second prong states a domestic corporation can be sued for patent infringement “where the defendant has committed acts of infringement and has a regular and established place of business.” 

Following TC Heartland, corporations have routinely argued they have been improperly sued in venues where they have no “regular and established place of business.”  For example, in Seven Networks v. Google, Google recently argued it does not have a  “regular and established place of business” in the eastern district of Texas.  Judge Gilstrap, however, disagreed in a 43-page opinion.  Judge Gilstrap found Google’s server and the computer rack where it is housed by a third-party internet service provider (“ISP”) to be Google’s “regular and established place of business” in that judicial district.

But one could easily ask, how is that a “place of business”?  In In re Cray Inc., the Federal Circuit explained that its “analysis of the case law and statute reveal three general requirements” for whether a corporation has a “regular and established place of business” in a judicial district.  These requirements include:  “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.

The Federal Circuit further explained that while the “‘place’ need not be a ‘fixed physical presence in the sense of a formal office or store,” “there must still be a physical, geographical location in the district from which the business of the defendant is carried out.”  The Federal Circuit further explained a “place” is defined as “a building or a part of a building set apart from any purpose or quarters of any kind from which business is conducted.”  The mere fact that a defendant has advertised it has a place of business in the judicial district is not sufficient.  “[T]he defendant must actually engage in business from that location.”  Further, the statute “cannot be read to refer merely to a virtual space or to electronic communications from one person to another.”  A test that encompasses virtual spaces or electronic communications would improperly expand the venue statute.

In Seven Networks, Judge Gilstrap found Google has a physical server occupying a physical space in the judicial district and that Google exercises exclusive control over not only the digital aspects of the server but also “the physical server and the physical space within which the server is located and maintained.”   As a result, Judge Gilstrap found the “server itself and the place of the [] server, both independently, and together, meet the statutory requirement of a ‘physical place.’”

Google argued the servers were not places of business much less a regular and established places of business of Google.  The Court disagreed.  The Court reiterated its prior conclusion stating “The only relevant difference between a warehouse that stores a company’s tangible products and Google’s [] servers is the nature of the products being stored—physical merchandise versus digital content.  Regardless of what the products may be, if the physical structure that stores them is ‘a physical, geographical location in the district from which the business of the defendant is carried out,’ that structure is a place of business under §1400(b).”  “Here, the []servers are best characterized as local data warehouses, storing information in local districts to provide Google’s users with quick access to the cached data, avoiding the delays associated with distant data retrieval from Google Data Centers.”

Some courts, however, have found §1400(b) “requires some employee or agent of the defendant to be conducting business at the location in question” for the location to be a place of business.  See, for example, Peerless Network, Inc. v. Blitz Telecom Consulting, LLC.  Judge Gilstrap disagreed with that reasoning because he found no basis in the language of the statute for such a requirement.  Therefore, he found venue proper in the eastern district of Texas in Seven Networks irrespective of whether Google had an employee or agent conducting business at the server’s location.

Given the difference of opinion on the minimum requirements for a place of business under the patent venue statute, we can expect this issue to be raised again at the Federal Circuit.

Christopher Gordon is a comedian who created a viral video about the honey badger with the notable catch phrase, “Honey Badger Don’t Care,” among others.  He later trademarked that phrase and sued greeting card companies for trademark infringement for using that phrase, or a variation thereof, without his permission.  As a result, the Ninth Circuit was recently asked to revisit the test set forth in Rogers v. Gramaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the greeting card companies could use Gordon’s catch phrase without infringing on his trademark.

Gordon originally created his Honey Badger video and posted it to YouTube in 2011.  It quickly generated millions of views on YouTube and he began selling goods with the Honey Badger catch phrases.  In June 2011, Gordon copyrighted his video and shortly thereafter registered the “Honey Badger Don’t Care” mark with the Patent and Trademark Office, including for goods such as greeting cards.  Gordon’s Honey Badger brand received a boost when notable celebrities used it and in late 2011, the “Honey Badger” brand was identified as one of ‘America’s hottest brands” by Advertising Age.

In early 2012, Gordon hired a licensing agent to begin licensing Honey Badger themed products, including greeting cards.  That agent met with representatives of American Greetings but no licensing agreement was ever entered into.  Gordon was successful, however, in entering into licensing agreements with various other greeting card companies.  In mid-2012, American Greetings and Papyrus Recycled Greetings began marketing seven different greeting cards using small variations on the “Honey Badger” catch phrases.  The president of one of the defendant greeting card companies testified that he created all of the greeting cards in question and while he did not recall what had inspired their designs, he claimed never to have heard of Gordon’s “Honey Badger” video.

Gordon filed a lawsuit against the two greeting card companies for trademark infringement in June 2015.  However, the district court granted summary judgment to the defendants and found that the “Rogers” test applied to bar all of Gordon’s infringement claims.  Gordon then appealed to the Ninth Circuit.

The Ninth Circuit began by recognizing that the purpose of the Lanham Act is to ensure that “(1) `owners of trademarks can benefit from the goodwill associated with their marks,’ and (2) `consumers can distinguish among competing producers.’”  To establish a trademark infringement claim, a plaintiff normally has to show that it: (1) “has a valid protectable trademark;” and (2) “the defendant’s use of the mark is likely to cause confusion.”   In this case it was undisputed that Gordon had a viable registered trademark so this first prong was satisfied.  The Ninth Circuit cautioned; however, that the likelihood of confusion test is meant to strike “a comfortable balance” between the Lanham Act and the First Amendment.

Thus, in order to protect the public’s interest and free expression, the Ninth Circuit had adopted the Rogers test from the Second Circuit to ensure that these competing interests are appropriately balanced.  In essence, the Ninth Circuit adopted the Rogers test so that it would limit the Lanham Act “to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest and free expression.”  Thus, under the Rogers test, a defendant accused of trademark infringement must “come forward and make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment.”  If a defendant can make that showing, “then the plaintiff claiming trademark infringement bears a heightened burden … the plaintiff must satisfy not only the likelihood of confusion test but also at least one of Rogers’ two prongs.”  That is, the plaintiff must then show that his or her mark is “either not artistically relevant to the underlying work or explicitly misleads consumers as to the source or content of the work.”

The Ninth Circuit then began by reviewing the Rogers case and several Ninth Circuit decisions that subsequently applied it.  In Rogers, at issue was an Italian movie about two fictional Italian cabaret performers who imitated Ginger Rogers and Fred Astaire in a film titled, “Ginger and Fred.”  Ginger Rogers sued the film’s producers for trademark infringement alleging that the title gave the false impression to filmgoers that the movie was either about her or sponsored by her.  The Second Circuit rejected her claim and found that the names Ginger and Fred were “not arbitrarily chosen just to exploit the publicity value of their real life counterparts” but rather, because they had “genuine relevance to the film’s story.”  Following the Rogers decision, the Ninth Circuit applied it to dispose of trademark infringement claims involving Barbie dolls (Matel, Inc. v. MCA Records, Inc.), a hip hop record label (20th Century Fox Television v. Empire Distribution, Inc.), and the videogame Grand Theft Auto (ESS Entertainment 2000, Inc. v. Rockstar Videos, Inc.).

The Ninth Circuit found, however, that the instant Honey Badger case showed the limits of the Rogers decision. It reasoned that although the Defendant’s greeting cards “are expressive works to which Rogers applies in,” there remained the factual issue as to whether their use of the “Honey Badger” catch phrase was artistically relevant.

The Ninth Circuit recognized that the Defendants had met their initial burden of showing that the greeting cards are “expressive works protected under the First Amendment” since a greeting card is intended to “convey a particularized message.”  However, as to the artistic relevance inquiry, the question is not only whether the mark is relevant to the rest of the work, but rather, “whether the mark is relevant to the Defendants’ own artistry.” That is, whether the Defendant uses it for artistic reasons.  On the other the hand, the Ninth Circuit reasoned that “the use of a mark is not artistically relevant if the defendant uses it merely to appropriate the goodwill inhering in the mark or for no reason at all.”

The Court concluded that a jury could look at the facts and determine that Defendants had used the “Honey Badger” catch phrase merely to use the goodwill that Gordon had established in his mark “without adding any creativity of their own.”  The Ninth Circuit concluded that the jury should decide “whether Defendants added their own artistic expression as opposed to just copying Gordon’s artistic expression.”

The Ninth Circuit found it significant that Plaintiff had presented evidence that he had sold various products bearing his mark, had discussed a licensing deal with representatives of at least Defendants’ parent corporation, and that Defendants started developing their product lines only after that meeting had occurred.  In sum, the Ninth Circuit concluded that there was evidence “that Defendants simply used Gordon’s mark in the same way that Gordon was using it.  To make humorous greeting cards in which the bottom line is `Honey Badger Don’t Care.’”  Thus, the Court ordered that the summary judgment in Defendants’ favor be reversed.

Defendants in trademark infringement cases should explore whether the Rogers test can provide them some immunity from a trademark infringement claim. However, to do so, they should be prepared to establish that they did more than merely use the Plaintiff’s mark in an identical or similar manner to the plaintiff.

 

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.