The IP Law Blog

Focusing on legal trends in data security, cloud computing, data privacy, and anything E

Court Denies Plaintiff’s Motion to Disqualify its Former Counsel as Counsel for Defendant in a Patent Litigation Action After Plaintiff Delayed Filing its Disqualification Motion for Over A Year After Discovering the Conflict.

Posted in Patent Law

In Eolas Technologies Incorporated v., Inc., 3-17-cv-03022 (CAND August 24, 2017, Order) (Tigar, USDJ) the United States District Court for the Northern District of California recently denied plaintiff Eolas Technologies Incorporated’s (“Eolas”) motion to disqualify its former counsel, Latham and Watkins (“Latham”), as counsel for defendant (“Amazon”) because Eolas delayed filing its disqualification motion for over a year after it learned of the potentially conflicting representation.  The Court further found Eolas waived its disqualification argument because the delay substantially prejudiced Amazon in its defense of Eolas’ patent infringement action against Amazon. 

On November 24, 2015, Eolas filed a patent infringement action in the Eastern District of Texas against Amazon, asserting infringement by Amazon of U.S. Patent No. 9,195,507 (the “’507 patent”).  The ‘507 Patent relates generally to manipulating data in a computer network, and specifically to retrieving, presenting and manipulating embedded program objects in distributed hypermedia systems.  After the case was filed, Amazon moved to transfer the case to the Northern District of California, and, on April 28, 2017, that case was transferred.

At some point between 1998 and 2006, Latham attorneys represented Eolas in some capacity, and although the exact scope and duration of that representation is contested, Eolas claimed that “Latham was privy to all of Eolas’ proprietary and confidential information relating to its technology, patents, patent applications, business, litigation and licensing strategies, particularly those relating to the ‘906” patent, which is the parent to the ‘507 patent-in-suit.  As a result, Eolas argued Latham must be disqualified from representing Amazon because “Amazon’s defense is predicated on attacking [the ‘906 patent,] the very patent that Latham once competed to assert and later defended, and about which Latham has acquired substantial confidential and strategic information.”

As a preliminary matter, the Court first had to decide whether Texas or California law governed.  As noted, the case was originally filed in the Eastern District of Texas, as was the motion to disqualify, but the case was transferred to the Northern District of California before a decision on the motion issued.  Amazon argued that Texas law still governed.  Eolas argued that California law now applies.  The Court held that it should apply Texas law when analyzing the motion to disqualify because when Latham agreed to represent Amazon, the case was pending in the Eastern District of Texas and Latham would have been correct to expect that Texas ethical codes would apply to any motion to disqualify.  The Court then reasoned that the same law should apply now because “[a] change of venue under § 1404(a) generally should be, with respect to state law, but a change of courtrooms.”  Thus, the Court applied Texas law to the motion to disqualify.

Moving on to the substance of the motion, the Court first noted that under Texas law, “[w]aiver of a motion for disqualification of counsel is proper where the delay in moving for a disqualification is for an extended period of time, or where it is done on the eve of trial.”  However, there was a factual disagreement about when Eolas discovered Latham’s alleged conflict.  Eolas claimed that, until January 6, 2017, “nobody at Eolas knew that Latham was representing Amazon.”  Amazon, on the other hand, asserted that Eolas had known that Latham represented Amazon a year earlier, by January 2016.

The Court sided with Amazon.  Specifically, the Court noted that Latham had appeared in the case for Amazon in January 2016, and that this appearance was recognized by Eolas’ counsel.  Under Texas law, an attorney’s knowledge is imputed to a client, in this case Eolas.  The Court also noted that Eolas knew that it had previously retained Latham, including for work related to the ‘906 patent.  Therefore, the Court found Eolas knew about the Latham conflict for a year before it decided to file its motion to disqualify, and that one year qualifies as an extended delay.

The Court also found that Amazon would face substantial prejudice from Latham’s disqualification.  The Court noted that in 2016 – the year during which Eolas knew of the alleged conflict but took no action – Latham billed over 3,400 hours to defend that action and prepare the matter for trial.  The Court found this large expenditure of time and resources weighed in favor of waiver.  Thus, the Court concluded that Eolas waived its right to seek disqualification by waiting one year after discovering Latham’s conflict to file its motion, and denied the motion to disqualify Amazon’s counsel.

This case is a good reminder to timely raise all issues and potential challenges.  Otherwise, if clients and their counsel delay to long after having been found to be aware of the issue or potential challenge, a court may find it to have been waived and/or unfairly prejudicial to the other party given the delay.

Patent Myths Corrected – Part Two

Posted in Copyright Law, Trademark Law

My last column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list. 

  1. A Patent Does Not Give the Patent Owner the Right to Practice the Invention.

Inventors and patent owners often assume that a patent gives them rights to practice the patented invention, i.e., freedom from infringement.  Not true.

A patent is a grant to its owner of the right to exclude others from making, using, offering to sell, and selling the patented invention in the United States, or importing the invention into the United States.  These rights are called exclusionary rights.  A patent does not provide its owner with the rights to do these things.  An invention may be patentable but still infringe another person’s patent.  In such a case, the patent owner may have a patent on the invention but cannot make or use the invention unless they obtain a license from the owner of the patent that is infringed.

  1. Patents Do Not Infringe Other Patents.

A patent cannot infringe another patent.  Only a machine, article of manufacture, composition of matter, or process can infringe a patent.

As stated above, a patent gives its owner the right to exclude others from making, using, offering to sell, selling, or importing the patented invention.  The patent is infringed if any of these acts are committed in the United States without the patent owner’s permission.  Thus, there is no infringement unless someone makes, uses, offers to sell, or sells the invention in the United States, or imports the invention into the United States.  An invention described in a patent may infringe another patent, but only if it is made, used, offered for sale, sold, or imported in the United States.  The patent itself is not an act of infringement.

  1. Patentability and Patent Infringement are Not the Same Thing.

Inventors often think that if their invention is patentable, then it cannot infringe other patents.  Not so.  Patentability and patent infringement are two different things.  An invention may be both patentable and infringe an existing patent.  In both cases, the starting point of the analysis is the claims.

To determine if an invention is patentable, the invention, as it is claimed, is compared to what is known in the field (the prior art).  In general, prior art includes written documents (such as other patents, published articles, catalogs, and websites), as well as actions by the inventor and third parties, that exist before the patent application is filed.

The first requirement of patentability is that the claims must be novel (new or different) over the prior art.  The test for novelty is performed by looking at each element of the invention as claimed.  If all of the elements of the claimed invention are present in a single prior art reference, then the invention is not novel and is said to be anticipated by the prior art.  The invention is not patentable.

The second requirement of patentability is that the claims must be nonobvious over the prior art.  The invention is obvious if the differences between the invention and the prior art are such that the invention, as a whole, would have been obvious at the time it was made to a person with ordinary skill in the art.  Unlike the test for novelty, the test for obviousness is not limited to a single prior art reference – any number of references can be combined to render an invention obvious.  For obviousness to be found, every element of the claimed invention must be present or suggested in the prior art, although not necessarily in the same reference.

To determine if an invention infringes an existing, in force (not expired) patent, the claims of the patent in question are compared to the invention (in a patent infringement action, the district court first interprets or construes the claims to determine their meaning and scope).  If each element of a claim is present in the invention (literally, or in some cases, by an equivalent), that claim is infringed.  Only one claim need be infringed for the patent to be infringed.

Thus, although it sounds counter-intuitive, an invention can be patentable over a prior art patent and, at the same time, infringe the same patent.

California Finally Rolling Out Its Own Cannabis Trademark Laws

Posted in Legal Info, Patent Law, Trademark Law

California was the first state to legalize marijuana for medical use.  In 1996, California approved Proposition 215, the California Compassionate Use Act.  Two decades later, California voters approved  Proposition 64, the Control, Regulate and Tax Adult Use of Marijuana Act (AUMA).  Despite the fact that cannabis has been legal in California since 1996, you still can’t get a trademark in California for marijuana, medical or otherwise.  Why is that.

The problem results from a disconnect between California’s trademark statutes and the California laws governing legal cannabis use.  California Business and Professions Code Section 14272 provides as follows:

The intent of this chapter is to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946 (15 U.S.C. Sec. 1051 et seq.), as amended. To that end, the construction given the federal act should be examined as nonbinding authority for interpreting and construing this chapter.

The USPTO regularly rejects applications to register trademarks related to cannabis on the grounds that such use would not constitute “lawful use in commerce”.  The legal reasoning underlying such rejection goes as follows:  Under federal trademark law, the registration of a trademark requires use of that mark in connection with the goods or services in commerce.  Federal trademark law defines “commerce” as all commerce which may lawfully be regulated by Congress.  If the goods or services covered by a mark are unlawful, actual lawful use in commerce is not possible.  And in those situations, a mark covering such unlawful goods or services cannot be federally registered.

Cannabis and products that are primarily intended or designed for use in connection with cannabis are federally illegal under the Controlled Substances Act.  The federal trademark office has taken the position that if a mark covers a good or services that would be illegal under the CSA, lawful use in commerce is not possible, and as such, the mark cannot be federally registered.

The trademark examiners in Sacramento have gone further than taking USPTO reasoning as nonbinding authority; they have taken the USPTO reasoning as gospel in  rejecting state applications for cannabis.  However, California’s lawmakers are proposing an amendment to California’s trademark laws that will address this inconsistency.

AB 64 proposes to, notwithstanding those provisions, authorize the use of specified classifications for marks related to medical cannabis and nonmedical cannabis, including medicinal cannabis, goods and services that are lawfully in commerce under state law in the State of California

AB 64 intends to provide a statutory mechanism for allowing the registration of a California trademark for cannabis products.  The bill proposes two new classifications of goods and services may be used for trademark marks related to cannabis, including medicinal cannabis that are lawfully in commerce under state law in the State of California.  The proposed classes are:

(1) 500 for goods that are cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products.

(2) 501 for services related to cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products.

While AB 64 would appear to solve conflict at the California Secretary of State’s trademark department, the down side is that California state trademark registrations for cannabis products will not be available until January 1, 2018.


Patent Myths Corrected – Part One

Posted in Patent Law

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.  Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand.  It is no wonder that there are a lot of misconceptions or myths about patents.

This is the first of two columns in which I will discuss a few of the most common aspects of patent law that are misunderstood.

  1. Ideas Are Not Patentable.

Clients often want to patent an idea.  Ideas are not patentable – inventions are patentable.

To be patentable, an invention must fall within one of four categories, referred to as statutory subject matter.  Those categories are:  processes (also referred to as methods), machines, articles of manufacture, and compositions of matter.

Process patents include patents for methods of doing just about anything, including some computer software and some methods of doing business (although business method patents are now under increasing scrutiny both in the PTO and in the courts).  Machine or apparatus patents include traditional types of machines as well as computer systems.  Articles of manufacture are devices such as tools or just about any non-machine.  Compositions of matter include chemical compositions, genes, and genetically engineered (non-natural) living organisms, including bacteria, plants, and animals.

The above four categories are the categories of inventions for which a utility patent can be obtained.  There are two additional types of patents:  design patents and plant patents.

Design patents protect ornamental designs for articles of manufacture, such as chairs, dishes, and glassware.  A design patent protects only the appearance of the article, not any aspect of its functionality.  An article may be the subject of both a design patent and a utility patent, however, if it has both ornamental design and function.

Plant patents protect distinct, new varieties of asexually reproducible plants (i.e., plants that can be reproduced without seeds, such as by budding or grafting).  They include such plants as certain types of roses, nuts, flowering plants, and fruit trees.

There are several things that are specifically not patentable.  They are:  abstract ideas and mental processes, laws of nature, natural phenomena, and mathematical algorithms.

Even if a client’s idea fits within one of the four categories of statutory subject matter, it still is not patentable if it is in its infancy.  The idea must be an invention.  The inventor need not have actually made the invention (reduced it to practice), but must have a complete and operative understanding of the invention.  The patent application must contain a detailed written description of the invention and must describe how to make and use the invention without undue experimentation.  Thus, an idea that is not fully fleshed out, even if it is patentable subject matter, is not ready to patent.  The inventor must be able to describe what the invention actually is.


  1. The Inventor Cannot Withhold Details of the Invention to Prevent the Public from Copying.

In addition to a detailed description of how to make and use the invention, a patent application must also include the “best mode” of carrying out the invention.  The best mode is the best way of using the invention known to the inventor at the time the application is filed.

This requirement prevents the inventor from keeping the best way of using the invention a secret.  A patent is a trade-off:  in exchange for the Government giving the inventor the rights to exclude others from making, using, selling, or offering to sell the invention, the inventor must fully disclose the invention to the public in the patent.  This is so that the public may practice the invention after the patent expires.

If an invention is easy to reverse-engineer, trade secret protection is essentially useless and patent protection is the better choice.  This is because patents, unlike a trade secret, protect against reverse engineering.  On the other hand, if an invention is difficult to reverse-engineer, trade secret protection may be preferable to obtaining a patent because, unlike a patent, a trade secret does not expire.


  1. You Cannot Tell What a Patent Protects by Looking Only at the Text or the Drawings.

A utility patent contains several parts:  a specification or disclosure, a drawing if necessary, and at least one claim.  The specification is a detailed description of the invention that tells a person of ordinary skill in the art how to make and use the invention and describes the best mode of carrying out the invention.  The drawings (which may include flow charts) must illustrate all essential elements of the invention.  Drawings are typically necessary for inventions that fall within the subject matter categories of machines, articles of manufacture, and processes; drawings are usually not necessary for compositions of matter.

The specification and drawings describe the different versions (embodiments) of the invention or examples of the invention.  They do not define what the patent owner may enforce with the patent.  This is determined by the claims.

The claims must contain the patentable elements of the invention.  It is the claims that are used to determine whether there is infringement.  The claims must be read in light of the specification and the drawings, but the claims define what the patent protects.  Sometimes, the claims are broader than what is described in the specification and the drawings, so one must read and interpret the claims to know what the patent protects.


  1. A Provisional Patent Application is Not a Quicker, Cheaper Way of Getting a Patent.

A provisional patent application cannot become a patent.  Despite its name, a provisional patent application is not really a patent application at all because it cannot mature into a patent.  Rather, a provisional patent application acts as a placeholder for a utility application – it is a mechanism for allowing an inventor to obtain an earlier filing date for a utility application.

A provisional patent application requires a specification and a drawing if necessary, and should contain at least one claim.  It must satisfy the same requirements as a utility application (written description, enablement, and best mode).  A provisional application is not ever examined by the PTO and no patent ever issues directly from it.  An inventor has one year from the filing date of the provisional application in which to file a non-provisional utility patent application for the same invention, claiming the benefit of the filing date of the provisional application.    Because a provisional application requires the same level of detail as a utility application, it is typically not much quicker or less costly than a utility application.

If a client has limited time or funds, however, filing a provisional application may be better than filing no patent application.  For example, a provisional application may be advantageous if the inventor needs to disclose the invention on short notice and does not have enough time to have a utility application prepared.  In that situation, the provisional application may provide the inventor with an earlier filing date than might otherwise be obtained, as long as what is later claimed in the utility application was disclosed in the provisional application.

Ninth Circuit Holds that “Reverse Confusion” Need Not Be Pled with Specificity

Posted in Trademark Law

A plaintiff seeking to prevail on a trademark infringement claim needs to establish that there is some likelihood of confusion between its mark and that of the defendant.  Generally, a plaintiff establishes that there is “forward” confusion by showing that customers believed they were doing business with plaintiff but because of a confusion in their respective marks, were actually doing business with the defendant.  Sometimes, however, a plaintiff will seek to establish “reverse confusion” in that a customer believing they were doing business with a defendant actually ends up doing business with the plaintiff.  The Ninth Circuit, in the case Marketquest Group v. BIC Corp. (decided July 7, 2017), was faced with the issue as to whether a plaintiff seeking to prevail under a theory of “reverse confusion” is required to plead that theory with specificity.

For nearly 20 years, Marketquest produced and sold promotional products utilizing its registered trademarks “All-in-One” and “The Write Choice.”  In 2009, BIC Corporation acquired a competitor in the promotional products field and began publishing promotional product catalogs featuring the phase “All-in-One” and in other advertising, using the phrase “The WRITE Pen Choice for 30 Years.”  Marketquest sued BIC for trademark infringement.  After the District Court granted summary judgment to BIC, Marketquest appealed to the Ninth Circuit.  (This article does not address the other issues decided by the Ninth Circuity other than the pleading requirement.)

In seeking to have the Ninth Circuit reject the appeal, BIC argued that Marketquest could not proceed under a “reverse confusion” theory because it had not specifically pled such a theory in its complaint. The Ninth Circuit began by recognizing that the Lanham Act allows a trademark owner to pursue a cause of action against someone who uses the trademark in commerce “when such use is likely to cause confusion.”  Given that neither party questioned the validity of Marketquest’s trademarks, the Ninth Circuit recognized that the main issue before the lower court was “whether there is a likelihood of confusion: that is, whether Defendants’ `actual practice[s were] likely to produce confusion in the minds of consumers about the origin of the goods … in question.’”  Since at least 2005, the Ninth Circuit has recognized two theories of consumer confusion: “forward confusion” and “reverse confusion”.  See Surfvivor Media, Inc. v. Survivor Prods., 406 F.32 625 (9th Cir. 2005).  Because Marketquest was attempting to establish trademark infringement under a theory of “reverse confusion,” BIC argued that it was required to plead such a theory with specificity in its complaint and that having failed to do so, the lower court properly granted judgment against it.

The Ninth Circuit recognized that it had not addressed this issue before, but that the First Circuit, in Dorpan, S.L. v. Hotel Melia, Inc. 728 F.3d 55 (1st Cir. 2013), had.  In that case the First Circuit ruled that “`reverse confusion’ is not a separate legal claim requiring separate pleading.  Rather, it is a descriptive term referring to certain circumstances that can give rise to a likelihood of confusion.”  The Ninth Circuit adopted this approach and ruled in Marketquest’s favor “when reverse confusion is compatible with the theory of infringement alleged in the complaint, a  Plaintiff need not specifically plead it.”

BIC argued that at least two prior Ninth Circuit cases required a different result.  BIC first cited the Ninth Circuit’s decision in Surfvivor to support its argument that strict pleading is required. However, the Ninth Circuit rejected this argument and held that the only the thing that the Surfvivor case held was that when reverse confusion is the only plausible theory in a trademark infringement complaint, a plaintiff cannot establish a viable trademark infringement claim based on “forward confusion.”

BIC also cited Murray v. Cable National Broadcasting Co., 86 F.3d 858 (9th Cir. 1996) in support of its proposition that in order to plead a “reverse confusion” theory, “a plaintiff must allege that the defendant `saturated the market with advertising’ or alleged actual reverse confusion from customers.”  The Ninth Circuit likewise rejected this argument recognizing that its Murray decision was decided before it had even recognized a theory of infringement based on “reverse confusion.”  More importantly, the Ninth Circuit concluded that the plaintiff in Murray had not alleged any cognizable trademark infringement claim regardless of whether it was based on “forward confusion” or “reverse confusion.”

The Ninth Circuit concluded that although Marketquest did not use the words “reverse confusion” in its complaint, nor did it allege that the defendants had saturated the market, it had alleged generally that customers “were confused `as to whether some affiliation, connection or association existed’ among defendants and Marketplace and specifically alleged that there were actual instances of forward confusion (i.e., that consumers that that defendant’s goods came from Marketquest).”  Although Marketquest did not raise issues of ”reverse confusion” until its motion for preliminary injunction and later on summary judgment, the lower court’s order did recognize that Marketquest was asserting infringement based on “reverse confusion.”  Although it had not pled such a theory with specificity in its complaint, the Ninth Circuit concluded that the lower court properly allowed Marketquest to proceed under a “reverse confusion” theory and held that Marketquest was not required to plead such a theory with specificity in its complaint.

The Ninth Circuit’s opinion in Marketquest will give plaintiffs some leeway in pleading their theory of trademark infringement. However, plaintiffs will still be required to allege some likelihood of confusion between its mark and that of the defendant in order to avoid a dismissal of their infringement claim.


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

Repeated Discovery Failures and Abusive Litigation Tactics Warrant Terminating Sanctions, Treble Damages, Attorney Fees and Permanent Injunction Against Defendant In Patent Litigation Case.

Posted in Trademark Law

By:  Eric Caligiuri

In TASER International, Inc. v. PhaZZer Electronics, Inc. et al, 6-16-cv-00366 (FLMD July 21, 2017, Order), a Florida District Court took the drastic step of entering a default judgment in favor of Plaintiff Taser, along with an award of compensatory and treble damages, an award of reasonable attorneys’ fees and costs, and injunctive relief because of Defendant Phazzer’s discovery failures and abusive litigation tactics.  According to the Court, since the outset of the litigation, Phazzer had engaged in a pattern of bad faith conduct designed and intended to delay, stall, and increase the cost of the litigation.  The Court determined no relief other than terminating sanctions would be adequate to address Phazzer’s repeated violations.  In the case, Plaintiff Taser filed a complaint against Defendant Phazzer for patent and trademark infringement, false advertising, and unfair competition. 

In the order granting the terminating sanctions, the Court began by summarizing the “abusive litigation and discovery practices” it found the Defendant undertook during the litigation.  Specifically, the Court noted that after three motions to compel, and after the case had been ongoing for nearly a year, plaintiff “TASER still has not received the most basic information regarding the details and relationships between Phazzer and its manufacturer/suppliers/distributors of the accused . . .[infringing] product.”  In addition, the Court noted that while Taser had been attempting to schedule depositions for five months, Phazzer continued to assert that “[e]very one of the handful of critical witnesses associated with Phazzer, a small, closely-held company, are represented to be on vacation, out of the country, in surgery, or convalescing.”

Furthermore, after multiple failures by corporate representative for Phazzer to appear when required, the Court order that a representative of Phazzer must attend a hearing on their counsel’s request to withdraw, cautioning that “[f]ailure to comply with this Order may result in imposition of sanctions, including entry of a default or default judgment against the offending party or counsel.”  However, the Court noted that no representative from Phazzer Electronics attended the hearing in clear violation of the Court’s Order.  Moreover, in addition to the “flagrant discovery abuse and contemptuous behavior exhibited by Phazzer,” the Court also cited to numerous attempts by Phazzer to derail the litigation by repeatedly attempting to stay the proceedings, and by filing a last minute emergency motion for a protective order.

As for legal authority for its terminating and others sanctions ordered against Phazzer, the Court stated Rule 37 of the Federal Rules of Civil Procedure “allows district court judges broad discretion to fashion appropriate sanctions for the violation of discovery orders.”  The Court then noted Rule 37 “authorizes a variety of sanctions, such as, striking pleadings, rendering a default judgment, and holding the disobeying party in contempt of court.”  Furthermore, Rule 37 provides that “the court must order the disobedient party, attorney advising that party, or both to pay the reasonable expenses, including attorney’s fees, caused by the failure, unless the failure was substantially justified or other circumstances make an award of expenses unjust.”

Although the sanction of default is seen as a “last resort,” the Court reasoned a party’s “willfull or bad faith disregard” for discovery orders may call for this type of sanction when the party failed to comply with a court order compelling discovery and warning that the failure to comply might result in a default judgment.  The Court also noted bad faith may be found through “delaying or disrupting the litigation or hampering enforcement of a court order.”  The Court then found that Defendant Phazzer engaged in the above-described misconduct with the subjective intent to abuse the judicial process.  Thus, the Court found the imposition of terminating sanctions, along with compensatory and treble damages, attorneys’ fees and costs, and a permanent injunction to be “necessary to adequately punish Phazzer for its wanton and repetitive disregard of this Court’s orders and as a consequence of its willful abuse of the discovery process. The imposition of lesser sanctions would underrepresent the seriousness of the offensive conduct.”

Although an extreme example, this case is a good reminder to parties and attorneys alike that all litigation must be taken seriously and that the discovery process must be respected.  Failure to do so can lead to sanctions, up to and including terminating sanctions in particularly egregious cases.

Amazon Tips its Hand with New Trademark Application

Posted in Copyright Law, Patent Law, Trademark Law

As you likely know, Amazon is taking the world by storm. Whether it is through its convenient offering of household goods, and pretty much anything else you can imagine, to your door, or through its expansive selection of movies and television shows provided through its Amazon Prime streaming service, Amazon is a major player in multiple industries. Recently, Amazon surprised the general public when it agreed to purchase Whole Foods Market for $13.7 billion and judging from its recently trademark application, Amazon is nowhere near done with its expansion. 

On July 6, 2017, Amazon filed a trademark application for “prepared food kits composed of meat, poultry, fish, seafood, fruit and/or vegetable.” The trademark that Amazon seeks to register is WE DO THE PREP.  YOU BE THE CHEF. Does this concept sound familiar? Perhaps even a bit like Blue Apron? If so, that’s probably because it is exactly like Blue Apron. If you aren’t familiar with Blue Apron, it is a meal-kit delivery service backed by major venture capital groups, including Fidelity and Bessemer Venture Partners. It was founded in August 2012 and has enjoyed major success to date. According to the Times Herald, as of September 2016, Blue Apron had shipped 8 million meal servings. This success led to the company going public last month.

Since that time, the value of Blue Apron’s stock has declined steadily, but it recently took its hardest hit when Amazon’s trademark application hit the public sphere, resulting in more than a ten percent drop in price per share. But what does this mean? And more importantly for purposes of this article, how is it related to intellectual property? Well, although there are likely various factors involved in the further decline of Blue Apron’s stock price, such as overvaluation, the most recent drop in stock price is likely caused by Amazon’s extraordinary goodwill.

Usually, when we discuss a mark’s goodwill, it is the product of the owner building goodwill in the mark through its use in commerce. But here, we have an instance where the mark has never been used in commerce and it already has substantial goodwill. The reason is that WE DO THE PREP. YOU BE THE CHEF. is inherently imbued with Amazon’s sizable goodwill. Not to mention, in light of the pending Whole Foods buyout, the mark is likely benefitting from Whole Foods’s goodwill, as consumers likely anticipate that Amazon will utilize Whole Foods products in its food kits. Although I don’t think that has been confirmed or even mentioned by anyone in the know, it is a reasonable assumption. Either way, it is clear that the mark is riding the coattails of its parent company and its parent company’s soon-to-be acquired subsidiary to give itself a head start into the food delivery marketplace. Whether that is indicative of future success in the marketplace remains to be seen.

Diddy’s @Infringement Instagram Post

Posted in Cyberspace Law, Entertainment Law, Web/Tech

In today’s age of rapid fire social media, posting to feed the ever growing hunger of a digitally connected audience has become second nature to celebrities and other influencers.  In fact, the larger the number of followers, the greater the compulsion to constantly connect.  And that’s where the problems can arise.

The facts underlying the claim seemed innocuous enough.  Hip hop celebrity Sean “Diddy” Combs was delivering an inspirational speech to young students at a new charter school he founded in Harlem.  Professional photographer Matthew McDermott took a picture of Combs surrounded by students; the picture eventually accompanied an online article in the New York Post.  McDermott’s name was featured in the credits identifying him as the photographer.  A few weeks later, Combs posts the picture on his Instagram account with comments about the charter school.  The result, a copyright infringement lawsuit for Combs.

Taking issue with Combs’ posting of the photo (and not including his credit), McDermott filed a lawsuit.  In the lawsuit, McDermott claimed that Combs did not license the photograph from him, that Combs removed his photography credit and that the page with the photograph received over 40,000 likes.  McDermott alleged that by publishing the photograph on his Instagram page, Combs infringed his copyright,  Technically, McDermott’s claim is accurate.  Under Section 106 of the Copyright Act, the owner of a copyright has the exclusive rights to (a)  reproduce the copyrighted work in copies, and (b) in the case of a picture, display the copyrighted work publicly.  Combs allegedly violated both of these rights by copying the picture from the New York Post and then posting it on his Instagram page.

McDermott’s second claim was one not regularly seen: a claim that Combs had violated Section 1202 of the Copyright, enacted pursuant to the Digital Millennium Copyright Act.  Section 1202 provides that no one shall, without the permission of the copyright owner (1) intentionally remove or alter any copyright management information; or (2) distribute, or publicly perform works knowing that copyright management information has been removed without the permission of the copyright owner knowing or having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement.  The term “copyright management information” is defined in the section as any of the following information conveyed in connection with copies of a work: (1) the name of, and other identifying information about, the author of a work; and (2) the name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.

McDermott claimed that by removing the credit that was included with the photograph as it was displayed in the New York Post, Combs violated both of the above provisions of the DMCA.

Since McDermott had registered his copyright in the photograph, if found liable for infringement, Combs could face liability for statutory damages up to $150,000 and attorney fees; add to that another potential $25,000 in liability for the DMCA violation.  According to a filing with the court, Combs and McDermott have settled the dispute.  As such, we will never know whether Combs could have defeated the infringement claim with a fair use argument.  Additionally, we will never know whether the court would have accepted McDermott’s claim that his photo credit qualified as “copyright management information.” (Certain courts read Section 1202 as applicable only to technological copyright protection methods and digital methods of conveying copyright management information.)  One thing is for certain:  this most likely ended up being one expensive Instagram post for Combs.

Offensive Trademarks Are Protected Free Speech Under the First Amendment

Posted in Trademark Law

Simon Tam is the lead singer of the rock group call “The Slants’, which is composed of Asian-Americans.  Tam applied for federal trademark registration of the band’s name.  While the term “slants” is a derogatory term for persons of Asian descent, Tam adopted the name “to ‘reclaim’ and ‘take ownership’ of stereotypes about people of Asian ethnicity,” thereby hopefully removing the term’s denigrating effect.  Despite the positive intention, the United States Patent and Trademark Office (“USPTO”) denied the trademark application for “The Slants” under a law prohibiting registration of trademarks that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”  15 U.S.C. §1052(a).  However, in its recent decision in Matal v. Tam, the United States Supreme Court found that this law violates the Free Speech Clause of the First Amendment of the U.S. Constitution.  As the Supreme Court opines, it is a bedrock principle of the First Amendment that “[s]peech may not be banned on the ground that it expresses ideas that offend.” 

The Lanham Act, enacted in 1946, serves as the foundation of our current federal trademark law.  A goal of this Act is to provide federal “protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.”  The Lanham Act, however, excludes registration of certain trademarks.  For example, under 15 U.S.C. §1052(e)(1), “a trademark cannot be registered if it is ‘merely descriptive or deceptively misdescriptive’ of goods.”  Further, under 15 U.S.C. §1052(d), a trademark cannot be registered “if it is so similar to an already registered trademark or trade name that it is ‘likely … to cause confusion, or cause mistake, or to deceive.’”  In the case of the trademark “The Slants”, the USPTO invoked another exclusion, the disparagement clause of 15 U.S.C. §1052(a), to deny registration of the trademark.  The disparagement clause prohibits registration of a trademark that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute …”

Ultimately, the Supreme Court determined that the disparagement clause of 15 U.S.C. §1052(a) is unconstitutional “viewpoint” discrimination.  The Court noted that the law “applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue.” But even though “the clause evenhandedly prohibits disparagement of all groups,” it is still viewpoint discrimination because it “denies registration to any mark that is offensive to a substantial percentage of the members of any group.”  As the Supreme Court has previously stated, “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”

The Court next had to determine whether the Government’s action and this statute could survive constitutional scrutiny given that it amounted to viewpoint discrimination.  The Court considered whether trademarks are commercial speech because at least some of the justices held the opinion that the Government’s regulation of trademarks would be subject to the more relaxed scrutiny described in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y. rather than strict scrutiny.  In concurring opinions, other justices asserted that whenever the government creates regulations of speech because of the ideas it conveys, the regulations are subject to strict scrutiny regardless of whether the speech can be characterized as commercial in nature.  Despite this disagreement between the justices, they all concurred in the finding that “the disparagement clause violates the Free Speech Clause of the First Amendment” because it was determined that the law could not even survive the relaxed standard of scrutiny.    Therefore, Tam has the right to register his trademark “The Slants”.

As a result of this Supreme Court decision, another longstanding dispute was resolved almost immediately.  The Justice Department and five Native Americans fighting the NFL’s Washington Redskins’ trademark dropped their opposition.  While the opponents find the Redskins’ trademark to be an offensive slur, in light of the ruling in Tam, the basis for their challenge to the Redskins’ trademark evaporated, bringing an end to legal fights that date back almost 25 years.

In early 2016, pending resolution of the Tam matter and related cases, the USPTO informally suspended processing of applications for trademarks that potentially violate any aspect of 15 U.S.C. §1052(a), including not just potentially disparaging marks but also those that could fall under another clause of §1052(a) prohibiting a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter.”  What happens now?  While the Supreme Court did not specifically address the “immoral, deceptive, or scandalous” language in Tam, does the reasoning apply equally to immoral and scandalous trademarks?  For example, will the USPTO now allow Erik Brunetti’s trademark for his brand “Fuct”?   It seems likely.

Will this ruling impact patents as well?  As others have pointed out, the Manual of Patent Examining Procedure (“MPEP”) currently instructs patent examiners to reject or object to offensive subject matter and drawings.  For example, MPEP Section 1504.01(e) entitled “Offensive Subject Matter” instructs that “[d]esign applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.”  Further, MPEP Section 608 states entitled “Disclosure” states that

[i]f during the course of examination of a patent application, an examiner notes the use of language that could be deemed offensive to any race, religion, sex, ethnic group, or nationality, he or she should object to the use of the language as failing to comply with 37 CFR 1.3 which proscribes the presentation of papers which are lacking in decorum and courtesy. The inclusion of such proscribed language in a federal government publication would not be in the public interest. Also, the inclusion in application drawings of any depictions or caricatures that might reasonably be considered offensive to any group should be similarly objected to.

An application should not be classified for publication under 35 U.S.C. 122(b) and an examiner should not pass the application to issue until such language or drawings have been deleted, or questions relating to the propriety thereof fully resolved.


While it is not clear how often these MPEP procedures are applied in practice and even though they are procedural rather than statutory in nature, they represent Government “regulation” of expression of an invention.  Wouldn’t one expect rejection of patent applications under these sections of the MPEP to be unconstitutional under the reasoning in Tam?  Only time will tell just how far the Tam ruling opens the door for intellectual property protection for what many may find offensive.  But the First Amendment protects our right free speech whether or not others find it offensive.

When is Making a Movie Not an Act of Free Speech?

Posted in Copyright Law, Entertainment Law, Legal Info, Trademark Law

I admit that the title of this article may be a bit deceiving.  Making films, like any other production of art, is almost always an act of free speech.  However, the Ninth Circuit was recently faced with a dilemma of determining this issue in connection with an anti-SLAPP motion brought against a screen writer who claimed that the defendants had failed to pay him for using his idea to make the film, The PurgeJames Kachmar 08_web

Douglas Jordan-Benel, a writer, wrote a screenplay he titled, Settlers Day, which described an annual, state-sponsored 24-hour period in which citizens were allowed to commit any crime without legal ramifications.  Jordan-Benel registered his screenplay with the Writers Guild of America and the U.S. Copyright Office.  Shortly after writing the screenplay, his manager emailed the United Talent Agency (“UTA”) about the screenplay.  After receiving permission, the screenplay was submitted to UTA for review.  A few days later, UTA notified Jordan-Benel’s manager that they had read the screenplay and were going to “pass.”  However, someone at UTA apparently forwarded the screenplay to another client and he and a partner later wrote a screenplay that they called, The Purge; which Jordan-Benel later alleged stole ideas from his screenplay.  The Purge movie was released in 2013 and produced by Universal City Studios, LLC.

Jordan-Benel later sued and alleged copyright infringement and that certain defendants were liable for breach of an implied in fact contract based on his submission of his Settlers Day script.  The defendants filed an anti-SLAPP motion seeking to have the breach of contract claim dismissed claiming that it arose “from an act in furtherance of [their] rights of petition or free speech …”.  The District Court denied the motion finding that Jordan-Benel’s breach of the implied contract claim was not based on the making of the film per se; but rather, on defendants’ failure to pay for the use of his ideas in making the film.  Therefore, the anti-SLAPP statute did not apply because the claim was not based on protected activity.  The defendants appealed this decision to the Ninth Circuit.

In Jordan-Benel v. Universal City Studios, et al., (June 20, 2017), the Ninth Circuit began by recognizing that California’s anti-SLAPP statute only applies to “a cause of action against a person arising from any act of that person in furtherance of the person’s right of petition or free speech“ under the California and/or U.S. Constitutions.  It noted that California had enacted the anti-SLAPP statute “to deter lawsuits [intended to]`primarily to chill the valid exercise of the constitutional rights of freedom of speech’.”  In essence, a defendant must first show that the plaintiff’s claim arises from an act in furtherance of the defendant’s free speech rights and if such showing is made, then the burden shifts to the plaintiff to show that they have probability of prevailing on their claim.  Here, the defendants claimed in their anti-SLAPP motion that Jordan-Benel’s claim for breach of contract arose from the creation, production, distribution and content of The Purge film. Thus, since such conduct was protected under anti-SLAPP, the Court should have dismissed Jordan-Benel’s contract claim.

The Ninth Circuit concluded that the district court properly denied the anti-SLAPP motion.  It focused its inquiry on two related questions: “(1) From what conduct does the claim arise? and (2) Is that conduct in furtherance of the rights of petition or free speech?”  The Ninth Circuit noted that the California Supreme Court has explained: “that a cause of action arguably may have been `triggered’ by protected activity does not entail that it is one arising from such … [T]he critical consideration is whether the cause of action is based on the defendant’s protected free speech or petitioning activity.”  That is, even though engaging in a protected activity may be related to plaintiff’s complaint that does not necessarily mean that the complaint is arising from such protected activity thereby triggering the anti-SLAPP statute.

The Ninth Circuit continued by stating that it would focus on the specific act of wrongdoing” that was challenged by the plaintiff.  It recognized that California has allowed breach of implied in fact contract claims like Jordan-Benel’s and requires a plaintiff to allege the following: “(1) He submitted the screenplay for sale to the defendants; (2) he conditioned the use of the screenplay on payment; (3) the defendants knew or should have known of the condition; (4) the defendants voluntarily accepted the screenplay; (5) the defendants actually used the screenplay; and (6) the screenplay had value.”  In essence, this claim is not necessarily an “idea theft” cause of action but rather one of an “implied promise to pay the reasonable value of the material disclosed.”  In applying this analysis to Jordan-Benel’s claims, it concluded that he was not suing due solely to the fact that defendants made The Purge film; but rather, that they failed to pay him for the use of his screenplay ideas.  Thus, the Ninth Circuit concluded that the district court properly held that he anti-SLAPP statute did not apply to Jordan-Benel’s contract claim.

The Ninth Circuit went further and rejected the defendants’ claim that the Court should apply a broader “but for” analysis.  In essence, the defendants urged the Court to apply the anti-SLAPP statute by arguing that Jordan-Benel would have no claim against them “but for” their making of The Purge film.  Although the Ninth Circuit recognized that the anti-SLAPP statute is to be construed broadly, it could find no legal authority for the proposition that it was intended to apply when protected activity is not the target of the claim as here.

The Ninth Circuit concluded that the defendants’ alleged failure to pay for the use of the plaintiff’s ideas in making of The Purge film was not conduct that was in furtherance of their right of free speech.  Thus, it affirmed the district court’s denial of the anti-SLAPP motion.


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