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Potential Copyright Owners Beware: Make Sure Your Copyright Registrations Are Accurate!

By James Kachmar on Posted in Copyright Law, IP

Normally, a copyright registration certificate constitutes “prima facie evidence of the validity of a copyright and of the facts stated in the certificate.”  17 U.S.C. §410(c).  But what happens if that certificate contains knowingly inaccurate information? The purported copyright owner could face not only invalidation of the copyright, but the inability to pursue copyright infringement claims or risk an award of attorney’s fees against them if they do so. This was the result in a case recently decided by the Ninth Circuit Court of Appeals titled: Gold Value International Textile, Inc. v. Sanctuary Clothing, LLC, et al., decided June 4, 2019.

Gold Value International Textile, Inc., which does business as Fiesta Fabric (“Fiesta”), designs textile patterns which it sells to customers who use the fabric to make clothing.  In October 2013, Fiesta registered what it called its Spring/Summer 2014 collection in a single registration with the Copyright Office. As part of this “collection,” Fiesta’s registration included a two-dimensional textile design known as the “1461 Design”.  In the copyright registration application, Fiesta’s president certified that none of the works in the collection had been “published” as of the filing of the registration, and thus, the Spring/Summer 2014 collection was registered as a group of “unpublished” works.

However, during the six months prior to the October 2013 registration, Fiesta apparently sold 190 yards of the fabric bearing the 1461 Design to a limited group of existing and potential customers.  Fiesta’s president would later testify that he knew about the sample sales prior to certifying the copyright registration in October 2013; although he claimed that he did not consider these sales of samples to be “publication.”

Sanctuary Clothing, LLC (“Sanctuary”) is a clothing manufacturer who Fiesta later sued claiming that its copyright in the 1461 Design had been infringed by Sanctuary’s selling of clothing that featured a design substantially similar to Fiesta’s 1461 Design. Fiesta also named several clothing retailers such as Nordstrom and Amazon as defendants in its lawsuit.

Fiesta and Sanctuary filed cross motions for summary judgment before the district court. The court granted the defendants’ summary judgment motion on the grounds that it found that Fiesta had knowingly put inaccurate information into its copyright registration and therefore the registration was invalid.  In reaching this ruling, the district court had inquired to the Copyright Office to determine whether Fiesta’s copyright registration would have been rejected if the Office had known that information had been knowingly included despite it being inaccurate. The Copyright Office responded in the affirmative.  After granting summary judgment to the defendants, the court granted their motion for attorney’s fees and awarded them attorney’s fees of more than $120,000 against Fiesta.  Fiesta appealed both of these determinations to the Ninth Circuit Court of Appeal.

The Ninth Circuit began by noting that although copyright registration is not necessarily required for copyright protection, it is “a precondition to filing an action for copyright infringement.”  In fact, a copyright registration certificate normally constitutes “prima facie evidence of the validity of the copyright and of the facts stated in the certificate.”

Prior to 2008, the Ninth Circuit had held that “inadvertent mistakes on registration certificates do not invalidate a copyright and thus do not bar infringement actions, unless the alleged infringer has relied to its detriment on the mistake, or the claimant intended to defraud the Copyright Office by making the misstatement.” However, in 2008, Congress passed the “PRO IP Act” that supplanted this Ninth Circuit precedence and provided that a registration certificate can satisfy the registration requirement regardless of whether it contains any inaccurate information, unless: (1) “the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate;” and (2) “the inaccuracy of the information if known would have caused the register of copyrights to refuse registration.”  17 U.S.C. §411(b)(1).  The Copyright Act also allows works to be registered as part of a group provided that the works in the group are either all published or all unpublished, i.e., there can be no group registration for works that are both published and unpublished.  The Ninth Circuit finally recognized that under the Copyright Act, “when copies are distributed `to the public by sale or other transfer of ownership or by rental lease or lending,’” or “offered to be distributed `to a group of persons for purposes of further distribution, public performance, or public display’”; than that particular work is considered ‘published’.

  1. Inaccurate Information

Fiesta began by arguing that the trial court erred in finding that its registration included inaccurate information. Essentially, Fiesta argued that it made an error by failing to put the publication date as to the 1461 Design in its registration and that this could be corrected by a supplemental registration. However, the Ninth Circuit rejected this argument because, to the extent that 1461 Design had been published, it could not be included in the Spring/Summer 2014 collection group, which contained unpublished works. Fiesta also argued that the Spring/Summary 2014 collection was essentially “unpublished,” including the 1461 Design, because the collection as a whole had never been “published together as a collection.”  The Ninth Circuit rejected this argument finding that there was no legal authority for it, nor did Fiesta offer any such authority.

Finally, Fiesta argued that the 1461 Design had not been published because it had only been distributed for the limited purpose of promotional activities. The problem with this argument, however, was that as a precaution, Fiesta later filed a second copyright application for the 1461 Design and stated in that application that the date of first publication of the 1461 Design was in March 2013 when it began selling sample fabrics containing the 1461 Design to its customers. Furthermore, the Ninth Circuit found it significant that Fiesta, in doing this limited distribution of the 1461 Design prior to October 2013, did not prohibit customers from distributing or reselling the fabric to others. Thus, the Ninth Circuit concluded that the 1461 Design had in fact been published prior to the October 2013 copyright registration and therefore the statements in the registration that all of the works were “unpublished” was inaccurate.

  1. Knowingly Inaccurate

Fiesta next argued that even if the Court was to conclude that the statement regarding publication was inaccurate, Fiesta did not make those statements “knowingly.”  In essence, Fiesta argued that it did not know that the limited distribution of the 1461 Design prior to October 2013 would be considered publication for purposes of copyright registration. The Ninth Circuit again rejected this argument, seeming to agree with the district court that “ignorance of the law” is “no excuse.” The Ninth Circuit also concluded that the use of the word “knowingly” in the PRO IP Act did not contain any reference to a culpable state of mind, i.e., knowing that one is doing something illegal, but rather only that the person knows that the statements are inaccurate.  Thus, there was no requirement that Fiesta had to be shown to have defrauded the Copyright Office which was the earlier Ninth Circuit standard that had supplanted by the PRO IP Act.

  1. Likely Registration Rejection

Finally, the Ninth Circuit had no trouble reaching the second prong of the PRO IP Act that the Registrar of Copyrights would have refused the registration had it known that the statements regarding the 1461 Design were inaccurate. Specifically, had the Copyright Office known that the 1461 Design had been “published” prior to the October 2013 registration, it would not have registered the copyright for Fiesta’s Summer/Spring 2014 collection because of the mixture of published and unpublished works. In conclusion, the Ninth Circuit found that because “a valid registration is a precondition to bringing an action for infringement, we affirmed the district court’s grant of summary judgment in favor of defendants” because of the invalidity of Fiesta’s copyright registration.

The Ninth Circuit also concluded that the trial court properly awarded attorney’s fees to the defendants. The Ninth Circuit found that the district court did not error in considering the various factors in favor of a fee award such as: (1) defendants were the prevailing parties; (2) they had obtained success in getting the infringement claims dismissed; (3) the purposes of the Copyright Act would be promoted by encouraging defendants to advance meritorious defenses like the defendants did here; (4) there would be no chilling effect on other plaintiffs bringing copyright infringement claims; and (5) the goal of compensating defendants and deterring plaintiffs from pursuing similar claims based upon invalid registrations.

The Gold Value International Textile case is a reminder that copyright registrants should review their registration applications carefully to make sure that they do not include any inaccurate information.  Otherwise, a copyright registrant risks having its copyright invalidated and being unable to pursue any claims for infringement.

Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on

By Josh H. Escovedo on Posted in IP, Trademark Law

If your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons, the most watched television series in history has ended. Even as I put the words to paper, or rather, this Word document, it doesn’t seem real. For those of you who haven’t watched the series, you probably think I’m being melodramatic. But loyal Thrones supporters know the agony I felt and can mostly likely empathize. Now, at this point you’re probably wondering what this has to do with intellectual property, and I promise, I’m getting there, but without a full comprehension of the Beatlemania-style obsession Game of Thrones has afflicted its fans with, you can never understand the value of the brand and its various marks. And to paraphrase Arya Stark’s mentor Syrio Forel, “[t]here is only one thing we say to [infringement]: Not today.”

As I’ve said in the past, when a company builds value in its trademarks, it’s imperative that the company take the necessary steps to protect its intellectual property. This is true regardless of the industry, but it is especially important in the entertainment industry where the trademarks are likely to be exposed to a substantial number of consumers, and would-be infringers, and more importantly, where the marks are likely to be used in conjunction with highly desirable merchandise. And of course, after producing blockbusters like The Sopranos, Band of Brothers, The Wire, Entourage, and Boardwalk Empire, HBO knows the name of the game, and certainly knows how to protect its intellectual property.

To that end, in 2009, two years after acquiring the rights to George R.R. Martin’s epic fantasy series, A Song of Ice and Fire, HBO filed a trademark application with the United States Patent and Trademark Office to register GAME OF THRONES for “[e]ntertainment services in the nature of an ongoing television series[.]” And that was just the start. Since that time, HBO has registered over 100 applications for different Game of Thrones trademarks, including without limitation WINTER IS COMING, WHITE WALKER, HOUSE TARGARYEN, HOUSE STARK, the THREE-EYED RAVEN, HODOR, and my personal favorite, DRACARYS, which is High Valyrian for “dragonfire.” For you non-Thrones fans, High Valyrian is the language often used by the show’s female lead, Daenerys Targaryen.

In an article on Law 360, Catherine M.C. Farrelly, the co-chair of Frankfurt, Kurnit, Klein & Selz, P.C.’s trademark group recognized, “Fans love to buy merchandise celebrating their favorite shows.” Later, she rhetorically stated, “Can’t you just imagine a die-hard fan buying a replica of the Iron Throne for his man cave, or sporting a recreation of Melisandre’s necklace, made with precious metals and gemstones?” As Ms. Farrelly’s statement implies, you could certainly imagine a fan having such a desire.

With that information in hand, it’s important for companies to get their application to the USPTO sooner rather than later. HBO understands this, and as such, has regularly submitted trademark applications before it began using the respective mark, or just before it anticipated the popularity of a certain mark rising. There are, of course, some exceptions. For example, HBO registered HODOR two days after it aired the iconic episode titled “The Door,” which discussed the character Hodor’s backstory just before he selflessly met his demise. This shows that even the world’s most sophisticated entities can’t always preemptively protect their IP. Things happen, and we can’t always predict what’s worth protecting in advance. And the conservative approach is to protect anything that has even a slight possibility of becoming valuable; that approach isn’t practical, or realistic for that matter.

HBO has vigorously protected its Game of Thrones intellectual property. It has proactively registered various marks, opposed the registration of numerous confusingly similar marks, and issued some strongly worded press releases when its IP was utilized by President Trump on Twitter. But although the show has ended, the IP battle isn’t over. Television series like Game of Thrones, and related intellectual property, don’t lose value overnight. You have to imagine that is especially true for the most popular television show of all time, and even more so when there are already five spinoffs in development.

Although HBO has won many Game of Thrones trademark battles to date, the war is far from over. Game of Thrones will be relevant for the foreseeable future, and as long as there are fans and a demand for merchandise, the potential for infringement will exist. How do I know this? Well, to paraphrase the Hand of the King, Tyrion Lannister, “[t]hat’s what I do … I [write] … and I know things.”

If You Can’t Describe It, You Can’t Patent It!

By Audrey A Millemann on Posted in IP, Patent Law

One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a).  This requirement means that the specification must fully disclose what the invention is.  The purpose of the written description requirement is to demonstrate to persons skilled in the art of the invention that the inventor had possession of the invention at the time the application was filed, i.e., that the inventor actually invented the invention.  In exchange for the limited “monopoly” that a patent provides to its owner, the public is entitled to know the scope of the patent.  The public must know what the patent owner can protect with the patent.

Another requirement of a patent is that it must be enabled – the patent must describe to a person skilled in the art of the invention how to make and use the invention.

Patents are not frequently invalidated for failure to satisfy the written description requirement or for lack of enablement.  Instead, patents are most commonly invalidated on the grounds that they lack novelty or are obvious over the prior art, and most of the cases deal with these requirements.

The written description requirement is an important one, however, as demonstrated by the Federal Circuit Court of Appeals’ recent invalidation of two pharmaceutical patents on that ground.

In Nuvo Pharmaceuticals Designated Activity Co. v Reddy’s Laboratories Inc., 2019 U.S. App. LEXIS 14345 (May 15, 2019), Nuvo sued several defendants for infringing two patents for a drug called Vimovo.  Vimovo was a combination drug which included a non-steroidal anti-inflammatory drug (NSAID) to treat pain, a coating around the NSAID to prevent its release until the pH had increased to about 3.5, and a proton pump inhibitor (PPI) (which was coated to prevent its degradation) to raise the pH and to reduce acid in the stomach.  The defendants were pharmaceutical companies who planned to market generic versions of Vimovo.

The defendants stipulated to infringement of the patents, but contended that the patents were invalid for several reasons, including for failure to satisfy the written description requirement.  At a bench trial, the district court held that the patents were valid.

On appeal to the Federal Circuit, the defendants argued that the patents’ claims for an effective drug that included an uncoated PPI were invalid because the patents did not describe the efficacy of the drug with the uncoated PPI.  Nuvo raised several arguments, primarily contending that the specification did not need to show the effective amount of the uncoated PPI.  Nuvo also presented expert testimony that its specification satisfied the written description requirement.

The Federal Circuit rejected all of Nuvo’s arguments.  The court explained that the written description requirement is not met by simply including the claim verbatim in the specification.  The court noted that the inventor does not need to include experimental data in the specification to show efficacy, or even conduct any testing; does not need to explain why the drug works; and does not need to reduce the invention to practice.  However, the specification must include a written description adequate to show that the inventor was in possession of the invention (a constructive reduction to practice).  The court stated:

“Patents are not rewarded for mere searches, but are intended to compensate their successful completion…That is why the written description requirement incentivizes ‘actual invention,’…and thus ‘a mere wish or plan for obtaining the claimed invention is not adequate written description’…[citations omitted].”

The court held that Nuvo’s patents were “fatally flawed.”  The specifications were nothing more “than a mere wish or hope that uncoated PPI would work…”

The court further rejected Nuvo’s argument that the patents satisfied the enablement requirement and therefore also satisfied the written description requirement.  The two requirements are “separate and distinct;” both requirements must be met.  The court explained:

“The purpose of the written description requirement is broader than to merely explain how to ‘make and use the invention’…The focus of the written description requirement is instead on whether the specification notifies the public about the boundaries and scope of the claimed invention and shows that the inventor possessed all the aspects of the claimed invention.”

The written description requirement is a key requirement for obtaining a patent.  In essence, it is the first requirement: the inventor must be able to state what it is they invented, and be able to describe the invention itself.  The requirement should not be assumed, overlooked, or minimized, at the risk of the losing the patent later on.

U.S. Supreme Court Allows App Store Anti-Trust Class Action to Proceed Against Apple

By Eric Caligiuri on Posted in IP, Web/Tech

In APPLE INC. v. PEPPER ET AL., case number 17-204, the United States Supreme Court considered a case alleging Apple has monopolized the retail market for the sale of apps and has unlawfully used its monopolistic power to charge consumers higher-than competitive prices. As an early defense in the case, Apple asserted that the consumer plaintiffs could not sue Apple because they supposedly were not “direct purchasers” from Apple under Illinois Brick Co. v. Illinois, 431 U. S. 720, 745–746 (1977). The Supreme Court disagreed, reasoning the plaintiffs purchased apps directly from Apple and therefore are direct purchasers under Illinois Brick. However, the Court did note that this case was still at the early pleadings stage of the litigation, so the Court did not assess the merits of the plaintiffs’ substantive antitrust claims against Apple, nor did the Court consider any other defenses Apple might have. In other words, the Court’s holding was limited to determining whether the Illinois Brick direct-purchaser rule barred these plaintiffs from suing Apple under the antitrust laws.

As some background on the matter, in 2007, Apple began selling iPhones, and in July 2008, Apple started the App Store. The App Store now contains about 2 million apps that iPhone owners can download. By contract and through technological limitations, the App Store is the only place where iPhone owners may lawfully buy apps. For the most part, Apple does not itself create apps. Rather, independent app developers create apps. Those independent app developers then contract with Apple to make the apps available to iPhone owners in the App Store. Through the App Store, Apple then sells the apps directly to iPhone owners. To sell an app in the App Store, app developers must pay Apple a $99 annual membership fee. Apple requires that the retail sales price end in $0.99, but otherwise allows the app developers to set the retail price. Apple also keeps 30 percent of the sales price, no matter what the sales price might be. In other words, Apple pockets a 30 percent commission on every app sale.

In response, in 2011, four iPhone owners sued Apple, alleging that Apple has unlawfully monopolized “the iPhone apps aftermarket.” The plaintiffs allege that, via the App Store, Apple locks iPhone owners “into buying apps only from Apple and paying Apple’s 30% fee, even if” the iPhone owners wish “to buy apps elsewhere or pay less.” Plaintiffs further allege that the 30 percent commission is “pure profit” for Apple and, in a competitive environment with other retailers, “Apple would be under considerable pressure to substantially lower its 30% profit margin.” The plaintiffs then allege that in a competitive market, they would be able to “choose between Apple’s high-priced App Store and less costly alternatives.” And they allege that they have “paid more for their iPhone apps than they would have paid in a competitive market.”

In response to the plaintiffs’ allegations, Apple moved to dismiss the complaint at the pleading stage, arguing that the iPhone owners were not direct purchasers from Apple and therefore may not sue. Apple cited the Illinois Brick case as authority, which held that direct purchasers may sue antitrust violators, but also ruled that indirect purchasers may not sue. The District Court agreed with Apple and dismissed the complaint. According to the District Court, the iPhone owners were not direct purchasers from Apple because the app developers, not Apple, set the consumers’ purchase price. The Ninth Circuit reversed. The Ninth Circuit concluded that the iPhone owners were direct purchasers under Illinois Brick because the iPhone owners purchased apps directly from Apple. According to the Ninth Circuit, Illinois Brick means that a consumer may not sue an alleged monopolist who is two or more steps removed from the consumer in a vertical distribution chain. Here, however, the consumers purchased directly from Apple, the alleged monopolist. Therefore, the Ninth Circuit held that the iPhone owners could sue Apple for allegedly monopolizing the sale of iPhone apps and charging higher than-competitive prices.

In then analyzing the issue, the U.S. Supreme Court held that under Illinois Brick, the iPhone owners were direct purchasers who may sue Apple for alleged monopolization, thus agreeing with the holding of the Ninth Circuit.  The Supreme Court reasoned that Section 4 of the Clayton Act provides that “any person who shall be injured in his business or property by reason of anything forbidden in the antitrust laws may sue.” That broad text readily covers consumers who purchase goods or services at higher-than-competitive prices from an allegedly monopolistic retailer. The Court also reasoned that it has previously held that “the immediate buyers from the alleged antitrust violators” may maintain a suit against the antitrust violators, but has also ruled that indirect purchasers who are two or more steps removed from the violator in a distribution chain may not sue.

Applying that reasoning here, and unlike the consumer in Illinois Brick, the iPhone owners are not consumers at the bottom of a vertical distribution chain who are attempting to sue manufacturers at the top of the chain. Thus, the Court determined the absence of an intermediary in the distribution chain between Apple and the consumer is dispositive.

Apple argued that Illinois Brick allows consumers to sue only the party who sets the retail price, whether or not the party sells the good or service directly to the complaining party. But the Court found three main problems with Apple’s argument. First, Apple argued it contradicts statutory text and precedent by requiring the Court to rewrite the rationale of Illinois Brick and to gut its longstanding bright-line rule. However, the Court reasoned any ambiguity in Illinois Brick should be resolved in the direction of the statutory text, which states that “any person” injured by an antitrust violation may sue to recover damages. Second, Apple’s theory is not persuasive economically or legally. It would draw an arbitrary and unprincipled line among retailers based on their financial arrangements with their manufacturers or suppliers. And it would permit a consumer to sue a monopolistic retailer when the retailer set the retail price by marking up the price it had paid the manufacturer or supplier for the good or service but not when the manufacturer or supplier set the retail price and the retailer took a commission on each sale. Third, Apple’s theory would provide a roadmap for monopolistic retailers to structure transactions with manufacturers or suppliers so as to evade antitrust claims by consumers and thereby thwart effective antitrust enforcement.

Next, contrary to Apple’s argument, the Court found the three Illinois Brick rationales for adopting the direct-purchaser rule cut strongly in plaintiffs’ favor. First, it promoted the longstanding goal of effective private enforcement and consumer protection in antitrust cases. Second, Illinois Brick should not be treated as a “get-out-of-court-free card” for monopolistic retailers to play any time that a damages calculation might be complicated. Third, this is a case where multiple parties at different levels of a distribution chain are trying to recover the same passed-through overcharge initially levied by the manufacturer at the top of the chain.

Therefore, in sum, the Court found Illinois Brick does not bar the consumers from suing Apple for Apple’s allegedly monopolistic conduct, and affirmed the judgment of the U. S. Court of Appeals for the Ninth Circuit. However, as noted above, this ruling only considered whether plaintiffs could proceed through the pleadings stage, and did not consider the full merits of the substantive antitrust claims against Apple.

Allegiant Airlines Tips its Hand Regarding Las Vegas Stadium Rights

By Josh H. Escovedo on Posted in IP, Trademark Law

If you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will bear. However, we may have discovered a clue based upon a recent filing with the USPTO.

On March 29, 2019, Allegiant Airlines, a Las Vegas-based airline, filed a trademark application for ALLEGIANT STADIUM. This filing has caused significant speculation that Allegiant has either entered into a deal with the Oakland Raiders for the naming rights of the stadium, or is, at the very least, engaged in meaningful negotiations to that end. But despite the coincidental timing, Allegiant claims that it is not tied to the $1.8 billion stadium. In fact, in response to a request for comment, an Allegiant representative stated, “The purpose was to protect the trademark for Allegiant Stadium for any future uses, should we need it.” The representative did confirm that Allegiant has engaged in sponsorship discussions with the Raiders.

Although the representative’s statement may be true, those of us who are familiar with trademark applications and registrations have some reason to question Allegiant’s sincerity. A party cannot simply file a trademark application and obtain the exclusive right to utilize that trademark in commerce without actually putting it to use. While the USPTO permits applicants to file on an intent-to-use (“ITU”) basis, there are temporal limitations. Specifically, even if a party applied for, and obtained, each of five extensions permitted by the USPTO, they would only have 36 months to use the mark before it returned to the public domain. So, although it’s possible that Allegiant is looking to protect its right to use ALLEGIANT  STADIUM in conjunction with a professional sports arena, these opportunities don’t frequently arise. With that said, it’s quite possible that Allegiant is simply trying to protect its right to use the mark if and when it is able to reach an agreement with the Raiders. The cost to file a trademark application and obtain a notice of allowance is reasonable enough to warrant a peremptory filing, even if the deal may never come to fruition. This is especially true when we’re talking about a $25 million per year kind of deal.

Allegiant is certainly no stranger to marketing in the sports industry. Its name appears on the ice at T-Mobile Arena, home of the Las Vegas Knights, and it was recently named the official airline of the Las Vegas Aviators, the Triple-A affiliate of the Oakland Athletics. However, those sponsorships are likely significantly less costly than the $25 million per year that the Raiders are seeking for the stadium rights. For that reason, some industry experts have expressed belief in Allegiant’s representation. In short, these individuals expressed that they do not believe that Allegiant would be willing to spend that amount of money to have its name on the stadium. They believe it would impose a financial burden on the airline, but they also noted that companies have often been willing to stretch themselves for unique opportunities like this.

I suppose we won’t know until a deal is complete, or close to it, but we can be certain we won’t have to wait long. The stadium is set for completion on July 31, 2020

Hidden Trademark Landmines in Comparative and Compatibility Advertisements

By Scott Hervey on Posted in Intellectual Property Litigation, IP

Nespresso has filed a lawsuit against Jones Brothers Coffee Distribution Company alleging trademark and trade dress infringement. In support of its trademark infringement claim, Nespresso alleges that Jones Brothers’ use of the words “Nespresso Compatible” in connection with its coffee capsules will cause consumers to believe that the Jones Brothers product is endorsed and/or sponsored by Nespresso because “Nespresso Compatible” is used prominently and without a disclaimer nearby.

Generally a trademark owner can stop others from using its trademark in order to prevent the public from being confused about the source of the goods or services. However, “fair use” presents a circumstance under which a third party can legally use another’s trademark. There are two types of trademark fair use. The first is the classic fair use situation where the mark itself has a descriptive meaning and the third party uses the term descriptively to describe its products or services.

The other type of trademark fair use is called nominative fair use. Nominative fair use involves the use of a trademark to refer to the actual mark owner’s goods or services. Where a third party’s product or service cannot be readily identified without using another party’s trademarks, this is a good indication that the use may be nominative fair use. In order to rely on nominative fair use as a defense, the user would need to have only used as much of the mark as was necessary and did nothing to suggest an endorsement or approval by the trademark owner.

Nominative fair use comes up in a variety of situations.

One situation involves compatibility advertising; use a third party’s trademark in order to inform the consuming public about a product’s fit with another product. The Supreme Court encourages the use of third party trademarks in compatibility advertising because it “assists consumers and furthers the societal interest in the fullest possible dissemination of information.” Whether compatibility advertising has morphed into an ad that creates the likelihood of consumer confusion is in the detail of the advertisement copy itself and whether it is factually ambiguous. This is why, in the case of comparative or compatibility advertising, courts consider factors such as the following: (1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.  (Depending on what Circuit you are in, these factors may be in addition to the factors normally considered when engaging in a likelihood of confusion analysis).

In the case of comparative or compatibility advertising, it seems that the first factor would almost always be answered in the affirmative; how can one describe how a product is compatible with a competitor’s product without mentioning the competitor’s product by name.

It is in analyzing the second nominative fair use factor that the issue of prominence comes into play; how prominently was the competitor’s mark featured on the defendant’s products. If the defendant uses the competitor’s mark too prominently – places too much of an emphasis on the competitor’s mark – the defendant will have stepped over the line into likelihood of confusion. This was the case in Nespresso USA, Inc v. Africa America Coffee Trading Co.; a prior case Nespresso brought (and won by default judgment) based on Africa America’s use of “Nespresso compatible” in connection with the sale of single serving coffee capsules.

It is in connection with the third nominative fair use factor that disclaimers come into play. Disclaimers can weigh against a finding of likelihood of confusion, but not always.  This was the case in Weight Watchers Int’l, Inc. v. Stouffer Corp., which dealt with advertisements for Stouffer’s Lean Cuisine product and its compatibility with the Weight Watchers points exchange diet program. In its advertisements, Stouffer mounted a campaign based on the Weight Watchers point exchange compatibility of certain of its Lean Cuisine frozen food products. In particular, the court noted one Stouffer magazine ad which read: “Lean Cuisine Entrees Present 25 Ways To Get More Satisfaction From Your Weight Watchers Program,” and then in smaller letters, “Weight Watchers Exchanges For Lean Cuisine Entrees.” The Stouffer ad contained a disclaimer that the exchanges it lists are based solely on published Weight Watchers information, and that the list of exchanges does not imply approval or endorsement of the Lean Cuisine entrees by Weight Watchers. Disclaimers often can reduce or eliminate consumer confusion; however each disclaimer must be judged by considering the business and its consumers, as well as the proximity of the disclaimer to the infringing statements. Here the court noted that Stouffer’s disclaimer appeared in minuscule print on the very bottom of the ad and because of the location and size of the disclaimer, it does not effectively eliminate the misleading impression conveyed in the ad’s large headline.

A good comparative or compatibility advertisement requires solid legal analysis as well as compelling copy. The lesson here is that brands and advertising agencies should get legal input before using a third party’s trademark in advertisements or otherwise in connection with its products or services.

Some at the PTAB Think Textbooks Are Not Printed Publications

By Jo Dale Carothers on Posted in Intellectual Property Litigation, IP

Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year!  Further, would you have imagined an argument that textbooks aren’t printed publications?  Given the amount we paid for textbooks in college and the number stored in my garage that seems like a strange argument, right?  Well, the PTAB essentially made just that argument in Hulu, LLC v. Sound View Innovations, LLC.  As a result, Hulu requested rehearing of the PTAB decision denying institution of inter partes review of the validity of Sound View’s patent, U.S. Patent No. 5,806,062.  Hulu argued the decision was in conflict with other PTAB decisions “involving the public availability of an asserted ‘printed publication.’”  In response to the request, the Precedential Opinion Panel (“POP”) ordered a rehearing to address the question:  “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?”

Specifically, the PTAB denied Hulu’s petition for IPR, arguing the submission of a textbook with the “copyright year of 1990” was insufficient to show the textbook was “publicly available” at that time.  In its request for rehearing, Hulu pointed out that the PTAB’s decision conflicts with several prior decisions.  For example, in other institution-stage decisions, the PTAB previously found that 1) “a copyright notice is prima facie evidence that a publication is prior art”; 2) ”a copyright notice, alone or combined with other minimal corroborating evidence, is sufficient evidence of public accessibility to meet the ‘reasonable likelihood’ threshold for institution”; 3) “a copyright notice by a well-known publisher in the United States is sufficient evidence of public accessibility”; 4) “a copyright notice should be evidence viewed in the light most favorable to a petitioner when resolving disputes regarding public accessibility at the institution stage”; and 5) “where a patent owner merely points out possible inconsistencies in petitioner’s evidence—without submitting its own evidence of a different public availability date—the petition should be instituted, and any determination as to public availability occur during the trial.”

In its review of the denial of Hulu’s IPR petition, the POP will reconsider not only whether a textbook’s copyright date is sufficient for it to qualify as a printed publication but also the broader question of what is sufficient for any type of reference to qualify as a printed publication.  Given that only patents and printed publications can be used as prior art in IPR proceedings, this is an important and frequently recurring issue.

The POP was designed to address the need for rehearings when issues such as the one being raised in Hulu occur.  Specifically, after learning from several years of AIA trial proceedings, including IPRs, the PTAB created the POP, which serves two main purposes:  1) to rehear certain matters and 2) to assist the Director of the United States Patent and Trademark Office (“USPTO”) in determining whether a PTAB decision should be designated as a “precedential” or “informative” decision rather than a “routine” decision.

POP review in a pending PTAB trial or appeal can only be obtained by recommendation.  Generally, a recommendation for POP review will be submitted by a party to a proceeding.  A “Screening Committee” considers all recommendations and then forwards its recommendation to the Director.  Whether to institute POP review is within the sole discretion of the Director, and that decision cannot be appealed.

The default members of the POP include the Director, the Commissioner for Patents, and the Chief Judge.  The Director, however, selects POP members and has the discretion to replace default members with the Deputy Director, the Deputy Chief Judge, or an Operational Vice Chief Judge.

When a case is sent to the POP for review, the POP will issue a decision resolving the question raised in that case.  Each POP decision may be designated as “precedential,” “informative,” or “routine.”  A “precedential” decision is binding on future PTAB panels.  An “informative” decision is not binding but provides the PTAB’s recommended approach for the issues raised. “Routine” decisions are only binding in the specific case.

The POP provides an additional review mechanism within the USPTO with the goal of addressing certain issues before they reach the Court of Appeals for the Federal Circuit or the U.S. Supreme Court.  In addition, the POP’s decisions provide a mechanism for issuing guidance to petitioners and patent owners and for providing predictability of results across different PTAB panels faced with similar issues.  It will be interesting to see just how much guidance and clarification the POP provides as to the printed publication issue raised in the Hulu case.  Perhaps, we will soon know whether a textbook is a printed publication!

Do You Know Where The Photos For Your Website Come From?

By James Kachmar on Posted in Intellectual Property Litigation, IP

Many businesses rely on their websites to promote their company and drum up business. Having a “professional” looking web page is considered a must and companies spend a lot of money in creating and maintaining their web presence. However, a recent case out of the Ninth Circuit Court of Appeals demonstrates that care must be taken in connection with the creation of a company’s website, especially when obtaining “stock” or other photos from a third party to help promote your business.James Kachmar

In Erickson Productions, Inc. v. Kast (decided April 16, 2019), the Ninth Circuit was asked to review a jury’s finding of copyright infringement involving the use of certain photos on the updated website for the defendant’s company. Kast operated several companies, including Atherton Trust, a real estate wealth management company. In 2010, Kast was looking for ways for Atherton Trust to be appointed by the State of California to manage the estates of disabled persons and set about creating a new website to help attract this new business. He hired a website developer to update Atherton Trust’s website and entered into an agreement with that developer by which his approval was required on all work, “including the design, development and finalization of the website.”

Kast worked with the developer to give his ideas as to what he wanted his new website to look like and apparently made numerous favorable comments towards an existing website for Wells Fargo Private Bankers. The revamped website for Atherton Trust that was eventually created included three photos that had apparently been copied from the Wells Fargo website. These three photos were taken by Jim Erickson and licensed to Wells Fargo for use on its web page. Neither Kast, his company or his web developer obtained licenses for the photos to use on the Atherton Trust website. Erickson soon learned of the use of his photos on the Atherton Trust website and in July 2011, sent a cease and desist letter to Atherton Trust demanding that his photos be removed and payment for the infringement of his photos copyrights. Although Kast immediately removed the three offending photos from the Atherton website, he declined to pay any money to Erickson. Erickson sued and, after a jury trial, was awarded damages of $450,000 ($150,000 for each offending photograph). Kast appealed this decision to the Ninth Circuit.

a. Vicarious Liability

The first issue of Kast’s appeal dealt with the jury’s finding that Kast was vicariously liable for copyright infringement because he had employed a developer who had directly infringed on Erickson’s copyrights in his photos that were used on the Atherton Trust website. The Ninth Circuit began by noting that the elements that a Plaintiff must prove to establish vicarious liability are that the defendant has “(1) the right and ability to supervise the infringing conduct; and (2) a direct financial interest in the infringing activity.” Kast focused his argument to the Ninth Circuit on the second prong and claimed that there was no evidence that he had received a direct financial benefit as a result of the use of the photos on the Atherton Trust website. The Ninth Circuit agreed with him and held that it was improper to award damages against him on a theory of vicarious liability.

The Ninth Circuit reasoned that, “[t]he essential aspect of the `direct financial benefit’ inquiry is whether there is a causal relationship between the infringing activity and any financial benefit a defendant reaps…” Erickson claimed that Kast had received at least three direct financial benefits as a result of the infringement: (1) the photographs drew customers to the Atherton Trust website; (2) Kast avoided paying licensing fees for the use of the photos; and (3) Kast was able to “rush” his new website’s launch. The Ninth Circuit rejected each of these arguments.

First, the Ninth Circuit held that there was no evidence that any consumer went to the Atherton Trust website to view Erickson’s photographs or purchased any services from Atherton Trust as a result of the photographs. Next, the Ninth Circuit rejected the argument that the avoidance of licensing fees could be a direct financial benefit in this case. The Court reasoned that avoiding licensing fees could only be a direct financial benefit if the web page developer had somehow lowered his fees as a result of avoiding having to pay licensing fees. However, there was no evidence that the developer had done so. Finally, the Ninth Circuit rejected the argument that the “rush” of the website was a direct financial benefit because, once again, there was no evidence that launching the website earlier had resulted in any business to Atherton Trust.

While the Ninth Circuit held that it was error to impose liability against Kast under a vicarious liability theory, it did affirm liability against him under a contributory liability theory.

b. Contributory Liability

The Ninth Circuit found that Kast was liable for contributory infringement, which is when a defendant “(1) has knowledge of another’s infringement; and (2) either (a) materially contributes to; or (b) induces that infringement.” Kast’s attack on this theory was really one directed at the jury instructions given by the trial judge, which included a definition of “knowledge” as including Kast having only a “reason to know” of the infringement. Kast argued to the Ninth Circuit that only “actual knowledge” or “willful blindness” would be sufficient to impose contributory infringement liability.

However, Kast had failed to raise this objection at his trial. The Ninth Circuit concluded that because of this failure, its review was limited to considering only whether the jury instruction constituted “plain error.” The Court found that the trial court did not commit “plain error” in this regard because there had been inconsistency in prior Ninth Circuit cases regarding the knowledge element for contributory infringement liability.

For instance, in 2013, the Ninth Circuit in Luvdarts, LLC v. AT&T Mobility, LLC, held that “actual knowledge of specific acts of infringement” and “willful blindness of specific facts” would be the only two mental states that allowed for a finding of contributory infringement. However, in 2011, the Court had affirmed a lower court’s decision to instruct the jury that contributory liability could be imposed where the defendant “knew or had reason to know” of the infringement. Thus, because the Court declined to find that this instruction as “plain error,” it affirmed the jury’s finding of contributory infringement against Kast.

c. Willfulness Finding

Finally, Kast urged the Court to reverse the verdict of willfulness on his part regarding the infringing activities. A finding of no willfulness would substantially reduce the amount of damages that could be awarded against Kast. Statutory damages in a case not involving willfulness are capped at $30,000 per work infringed. (See 17 U.S.C. §504(c)(1).) However, if there is a finding of willfulness, statutory damages can rise up to $150,000 per work infringed. (Id., § 504(c)(2).)

Kast urged the Ninth Circuit to reverse the finding of willfulness saying that the trial court had improperly instructed the jury that willfulness could include whether he “should have known” of the claimed infringement. The Ninth Circuit began by nothing that willfulness “requires an assessment of a defendant’s state of mind.” A plaintiff seeking to establish willfulness under the Copyright Act must prove “(1) that the defendant was actually aware of the infringing activity; or (2) that the defendant’s actions were the result of reckless disregard for or willful blindness to the copyright holder’s rights.” (Citing, Unicorlors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 991 (9th Cir. 2017).

The Ninth Circuit concluded that a “should have known” standard does not fit within the statutory framework because it is essentially a negligent standard. To say that a defendant such as Kast “should have known” of the infringing activity meant that, while he may have been negligent, he was not necessarily guilty of willfulness under the Copyright Act. The Ninth Circuit further concluded that had the jury been properly instructed, it may not have found that Kast acted “willfully” and could not have awarded more than $90,000 in damages. Therefore, the Ninth Circuit reversed the verdict and remanded it back to the trial court to make a new determination as to the amount of statutory damages that should be awarded to Erickson.

The facts of the Erickson case serve as a reminder that when developing or updating your company website, you should pay careful attention to where content for the site is coming from and whether any licensing fees should be (and have been) paid. Otherwise, the owners of the website face the prospect of being held vicariously and/or contributorily liable for any content on the web page that infringes on another person’s copyrights.

Are Rules for Playing a Game Patentable?

By Audrey A Millemann on Posted in Intellectual Property Litigation, IP, Patent Law

A lot of things are patentable. Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable. But some things are not: the exceptions are laws of nature, natural phenomena, and abstract ideas.

The Federal Circuit Court of Appeals has many times had to decide what these terms mean. To make that determination; the court applies the two-part test set forth set forth by the Supreme Court in Alice Corp v. CLS Bank International, 573 U.S. 208 (2014). First, the court decides if the claims sought to be patented fall within patent-ineligible subject matter, such as abstract ideas. If so, then in a second step, the court decides if the claims contain some element that transforms the abstract idea into patent-eligible subject matter.

In 2016, the Federal Circuit applied the Alice test to decide whether a method of playing a wagering card game was patentable. In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In that case, the court held that the claimed method of playing the card game was similar to the method of mitigating financial settlement risks that was claimed in Alice and the method of hedging risks in consumer transactions that was claimed in Bilski v. Kappos, 561 U.S. 593 (2010).

In 2018, the Federal Circuit decided whether a method of playing a wagering dice game was patentable. In re Marco Guldenaar B.V., 911 F.3d 1157 (2018). In that case, the claims required providing a set of three dice, in which the first die had one face marked, the second die had two faces marked, and the third die had three faces marked; wagering on an outcome where one or more of the marked faces of the dice would appear; rolling the dice; and paying out money if the wager outcome occurred. The patent application had been rejected by the PTO on the grounds that the claims were directed to patent-ineligible subject matter. The PTO found that the claims, for the rules for playing a game, fell within “methods of organizing human activity” and constituted an abstract idea. The PTO also rejected the claims on the printed matter doctrine.

The Patent Trial and Appeal Board affirmed the PTO’s rejections.

The Federal Circuit affirmed the decision of the PTAB, holding that the claims were ineligible as directed to an abstract idea. The court said that the claims for a method of playing a wagering game were similar to the claims that were in rejected in Smith. The court agreed with the PTAB that the claims were the rules for playing a game, and were also a method of organizing human activity. The court explained that rules for playing a game are an abstract idea, but that, under the Alice test, they may be patent-eligible if the claims include an inventive concept that transforms the abstract idea into something more. However, the court found that the steps of placing a wager, rolling the dice, and making a payout on the wagered outcome were merely conventional steps, not an inventive concept. Thus, under Alice, the claims were a patent-ineligible abstract idea.

The court further held that the rejection of the claims on the printed matter doctrine was proper. The applicant had argued that the markings on the dice made the claims patentable. The court held that the markings were printed matter, which is not patentable, because the content of information is not patent-eligible subject matter under §101.

Lastly, the court clarified that the fact that the claims are directed to a physical game is not determinitive. Just because something is physical does not mean that it overcomes the abstract idea exception to patentability. Rules for playing a game may involve physical steps, but they still constitute an abstract idea.

Attorney Fees for Successful Defense of IPR May Not Be Recovered as Damages under 35 U.S.C. § 284

By Eric Caligiuri on Posted in Intellectual Property Litigation, IP, Patent Law

On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff should recover, as compensatory damages, its costs incurred in a related Inter Partes Review (IPR) proceedings.  The Court found such testimony would constitute an improper circumvention of 35 U.S.C. § 285’s requirements for an attorney fee award.

35 U.S.C. § 285 authorizes a court to award reasonable attorneys’ fees to the prevailing party in “exceptional cases.”  In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), the Supreme Court defined an “exceptional case” as one that “stands out from others with respect to the substantive strength of a party’s litigating position . . . or the unreasonable manner in which the case was litigated.”  Under Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014), district courts are to apply a “totality of the circumstances” test to determine whether a case is exceptional.

Moreover, the Federal Circuit recently issued a decision in Stone Basket Innovations, LLC v. Cook Medical LLC that clarified the requirements for litigants seeking attorneys’ fees under 35 U.S.C. § 285.  There, the Federal Circuit found dispositive Cook Medical’s failure to provide “early, focused, and supported notice [to Stone Basket] of its belief that it was being subjected to exceptional litigation behavior.”  According to the Federal Circuit, a “party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its ‘parade of horribles’ after all is said and done.”  Indeed, where there is no indication of willful ignorance or failure to assess the soundness of pending claims, post-judgment notice of its assertion that the claims were always baseless cannot mandate an award of fees under a “totality of the circumstances” analysis.

Here, Plaintiff Nichia initiated the instant action on March 23, 2016, alleging that certain televisions of Defendant VIZIO infringe four of its patents directed to light emitting diode (“LED”) semiconductor chips and phosphor materials that are combined to produce white light.  The asserted patents (1) list the same four inventors; (2) share a common specification; and (3) claim priority to the same Japanese patent application, P 09-081010, and the same U.S. Patent Application No. 08/902,725, which issued as U.S. Patent No. 5,998,925 on July 29, 1997.

Before trial VIZIO moved to preclude Nichia’s damages expert from testifying that Nichia should recover, as compensatory damages, its costs and fees “for defending the validity challenge to the patents-in-suit at the patent office.”  VIZIO argued Nichia’s attempts to do so were “an end run around the strict requirements for attorney’s fees under Section 285 of the Patent Act” and is directly contrary to law.  In his expert report, Plaintiff Nichia’s expert states:

I have been informed by Counsel that as a result of VIZIO’s infringement of Nichia’s patents-in-suit by the accused TVs, Nichia initiated this lawsuit. VIZIO then decided to initiate a separate proceeding at the patent office in which it challenged the validity of the patents-in-suit… I understand that the cost to Nichia for defending the validity challenge to the patents-in-suit at the patent office was approximately $800,000…[T]he total damages amount should be adjusted upward by approximately $800,000 to account for this additional damage….

Nichia contended that these costs and fees are proper damages under § 284, arguing that this section simply provides that a court should “award the claimant damages adequate to compensate for the infringement . . . in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.”  However, the Court found that the expert’s inclusion of attorneys’ fees in his calculated reasonable royalty rate is improper.

The Court reasoned that the Federal Circuit’s opinion in Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1581 (Fed. Cir. 1996), addressed a similar question and was instructive.  In that case, the district court awarded litigation expenses to a prevailing plaintiff as part of its royalty rate.  But, the Federal Circuit reversed, explaining that in sections 284 and 285, the Patent Act sets forth statutory requirements for awards of enhanced damages and attorney fees. The statute bases these awards on clear and convincing proof of willfulness and exceptionality.  At no point does it suggest allowing enhancement of a compensatory damage award as a substitute for the strict requirements of these statutory provisions.

The Court here reached a similar conclusion, reasoning “the American Rule is a ‘bedrock principle’ of this country’s jurisprudence. It provides that, in the United States, ‘[e]ach litigant pays his own attorney’s fees, win or lose. The American Rule may only be displaced by an express grant from Congress.” (citations removed). The statute at question here, 35 U.S.C. § 284, contains no such express grant from Congress. Instead, Congress has provided for attorneys’ fees only in “exceptional cases.”

Thus, the court found that to the extent that Plaintiff believes it is entitled to recover its attorneys’ fees, it cannot do so simply by lumping it into its compensatory damages, but must instead meet the more stringent requirements of 35 U.S.C. § 285.  Therefore, the court granted VIZIO’s motion to exclude Plaintiff Nichia’s expert from testifying about the costs and attorney’s fees incurred in the related IPR.