In the 9th Circuit (as well as the 2nd, 5th, 6th, and 11th Circuits), the test for determining whether the use of a third-party trademark in an expressive work (i.e., use of a brand within a movie, TV series, video game, etc., including as part of the title of an expressive work) is the 2nd Circuit’s test from the 1989 case of Rogers v. Grimaldi. The Rogers test was adopted by the 9th Circuit in Mattel, Inc. v. MCA Records (better known as the “Barbie Girl” case). Under the Rogers test, the use of a third-party mark in an expressive work does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” As is evident, this is very different from the multifactor test adopted in AMF Inc. v. Sleekcraft Boats – (1) strength of the protected mark; (2) proximity and relatedness of the goods; (3) type of goods and the degree of consumer care; (4) similarity of the protected mark and the allegedly infringing mark; (5) marketing channel convergence; (6) evidence of actual consumer confusion; (7) defendant’s intent in selecting the allegedly infringing mark; and (8) likelihood of product expansion.” The reason for the differing treatment of expressive works is twofold: (1) they implicate the First Amendment right of free speech, which must be balanced against the public interest in avoiding consumer confusion; and (2) consumers are less likely to mistake the use of someone else’s mark in an expressive work for a sign of association, authorship, or endorsement.

Under the Rogers test, the first inquiry is whether the use of the third-party mark has “some artistic relevance”. The threshold for this test is extremely low; basically, if the level of artistic relevance is more than zero, this is satisfactory. If there is greater than zero artistic relevance in the use of the third-party mark, the next analysis is whether the use of the third-party mark explicitly misleads as to the source or content of the work. Although in most instances an “explicitly misleading use” requires an overt claim or an explicit reference to an association with the third-party mark. However, in Gordon v. Drape Creative, Inc., the 9th Circuit said that “the use of a mark alone may explicitly mislead consumers about a product’s source if consumers would ordinarily identify the source by the mark itself.”

Last year a federal district court in Colorado (which is in the 10th Circuit) addressed a Rogers type claim which was a question of first instance for that court and the 10th Circuit. The case involved titles of nature documentary series; one producer claimed that the title of a National Geographic nature documentary series infringed the trademark rights in the title of the producer’s prior series. The court declined to follow Rogers and adopted a new test.

In the 80s and 90s Marty Stouffer Productions produced a nature documentary series entitled Wild America that was televised on PBS. Today, episodes of Stouffer’s Wild America are broadcast on television, can be purchased on DVD and are accessible through a variety of streaming services. National Geographic is a producer of documentary programming on its Nat Geo TV and Nat Geo WILD stations. National Geographic had explored with Stouffer the possibility of licensing or purchasing Stouffer’s Wild America film library, but no deal was reached. In 2010, Stouffer declined Nat Geo’s request to use the titles Wild Americas or Wildest Americas for a natural history miniseries, advising that those titles were too close to Stouffer’s registered “Wild America” trademark. In 2012, National Geographic aired a series with the title Untamed Americas in the U.S. and the title Wild America outside of the US. National Geographic subsequently released nature-themed programs in the U.S. under the titles America the Wild, Surviving Wild America and America’s Wild Frontier. Stouffer then sued Nat Geo for trademark infringement and other claims.

This being a case of first impression for this particular circuit court and the 10th Circuit, the court, in ruling on NatGeo’s motion to dismiss, considered the purpose of the Rogers test – a means of limiting the application of the Lanham Act to protect First Amendment interests. While agreeing with the principal of the Rogers test, the court found faults with it and elected instead to create its own new test.

Displeased with the Rogers test, the Colorado district court adopted its own six non-exclusive factors to consider. Those factors are: (i) Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services; (ii) to what extent has the junior user “added his or her own expressive content to the work beyond the mark itself”; (iii) does the timing of the junior user’s use in any way suggest a motive to capitalize on popularity of the senior user’s mark; (iv) in what way is the mark artistically related to the underlying work, service, or product; (v) has the junior user made any statement to the public, or engaged in any conduct known to the public, that suggests a non-artistic motive; and (vi) has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?

And while the district court ultimately found for Nat Geo (as it would have under a strict application of the Rogers test), the interesting inquiry is why this court felt Rogers was insufficient. It seems that a significant factor in the court’s reasoning was the 9th Circuit’s holding in Gordon v. Drape Creative.

Gordon involved a trademark dispute between the owner of famous YouTube videos featuring a honey badger who coined the phrase “Honey Badger Don’t Care” and subsequently registered trademarks for various goods including greeting cards, and Drape Creative who produced a greeting card using variations of Honey Badger Don’t Care. The 9th Circuit, applying Rogers, found that the artistic relevance of Drape’s use of Honey Badger Don’t Care met the threshold of being more than zero, but ended up sending the case back to the district court in order to determine whether Drape’s use was “explicitly misleading.”

With the threshold of artistic relevance being so low and the requirement of an explicit or overt claim to meet the requirement of “explicitly misleading use”, the court concluded that “trademarks registered for arguably artistic products and services are not worth the paper that the trademark registration is printed upon.” Anyone can use a trademark, the court continued, “even to sell the same goods or service for which the trademark was granted, if the goods or service can be deemed ‘art’.” The court said that the Rogers test, taken at face value can destroy the value of a trademark if the alleged infringer is willing to be sued and defend themselves under the Rogers test.

It seems that the problem with Rogers, at least according to this district court, is the extremely low threshold of artistic relevance. In a case of this nature, the court stated that the First Amendment should place a “thumb on the scale of expressive use” and not “a fist”. This court’s “Genuine Artistic Motive” test allows the court to probe the motive for the adoption of the allegedly infringing use and include those facts in its analysis. And while Rogers remains the test adopted by a number of Circuits, it certainly would be interesting if this case were appealed to the 10th Circuit.

Pfizer and BioNTech recently asked the Southern District of California to dismiss a patent infringement claim from Allele Biotechnology related to Pfizer and BioNTech’s Covid-19 vaccine.

Allele holds a patent for a fluorescent protein called mNeonGreen, which causes some cells to glow when exposed to certain kinds of light.  Allele does not claim that mNeonGreen is used in the vaccine or was used by Pfizer and BioNTech to develop the vaccine, but rather that mNeonGreen is used in one of the clinical tests to detect the presence of antibodies in a patient that was given the Covid-19 vaccine.  A third party created a pseudo Covid-19 virus containing mNeonGreen, which then introduced to a sample of a patient’s blood cells.  If the patient has no antibodies to Covid-19, the pseudo virus will infect the blood cells and the cells will fluoresce, allowing the detection of the virus.  No fluorescence means that the cells were not infected with the virus, and that the patient therefore has antibodies to Covid-19.

Allele claims that mNeonGreen was used repeatedly throughout Pfizer and BioNTech’s vaccine trials and was referenced multiple times in their Emergency Use Application to the FDA.  At the same time, Allele filed suit against Regeneron, the maker of an experimental antibody cocktail found to be successful in treating Covid-19 (and was famously given to President Trump just days before Allele filed suit against Regeneron).  Allele claims that its product was infringed by both the antibody cocktail and the vaccine.

Pfizer and BioNTech argue that they fall within the safe harbor in 35 U.S.C. 271(e)(1), which allows the use of patented inventions for “uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs….”  Citing Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 671 (1990), Pfizer and BioNTech claim that they are permitted to “engage in otherwise infringing activities necessary to obtain regulatory approval,” including under their Emergency Use Application to the FDA.  Because Pfizer and BioNTech used mNeonGreen only in the context of clinical trials to asses the presence of Covid-19 antibodies, Pfizer and BioNTech argue that they fall within the safe harbor provision of the statute.

The hearing on Pfizer and BioNTech’s motion to dismiss is set for May 3.  Given the high stakes of the Covid-19 testing and vaccine market, it will certainly be closely watched.

Finding Google’s copying a fair use, the Supreme Court ended Oracle’s decade-long attempt to recover copyright damages.  The battle began between these tech giants when Google designed its Android software platform for mobile devices, such as smartphones.  The platform allows “computer programmers to develop new programs and applications” for Android-based devices.  In designing the mobile platform, Google independently developed most of the code but copied what the parties referred to as “declaring code” for 37 application programming interfaces, or APIs.  The declaring code in APIs “enables a set of shortcuts for programmers.”  A programmer can select a particular task from the API’s task library without having to learn anything more than a simple command, thus allowing the programmer to use a library of prewritten code to carry out complex tasks without having to write the code from scratch.

At the time Google was developing the Android platform, many software developers were using Sun Microsystems’ Java programming language and its popular Java SE platform.  Oracle, shortly after acquiring Sun Microsystems in 2010, accused Google of taking critical portions of the APIs in the Java code for unauthorized use in its Android platform.  While Google independently developed the underlying code for the tasks, Google copied the declaring code for certain tasks “useful to programmers working on applications for mobile devices.”  “Without that copying, programmers would need to learn an entirely new system to call up the same tasks.”  With the “structure, sequence, and organization” of the APIs so similar, Oracle alleged Google infringed its copyrights. Continue Reading Fair Use Shields Google in Its Copyright Battle with Oracle

The Ninth Circuit recently considered an issue of first impression: What standard of review does an appellate court apply when reviewing a district court’s grant of summary judgment in a trademark infringement case on the equitable basis of the unclean hands doctrine. The Ninth Circuit faced this issue in the case titled: Metal Jeans, Inc. v. Metal Sport, Inc. (decided Feb. 16, 2021).

In the Metal Jeans case, Gary Topolewski owned Metal Jeans and was the former owner of Topolewski America, Inc. (“TA”). He had been selling “METAL” branded clothing since the early 1990s, primarily through hard rock music magazines. He gradually expanded his offerings to a variety of markets, including motorcyclists, skaters, lumberjacks and “headbangers.”

In 1999, he registered the “METAL” mark on TA’s behalf for use on various clothing items, including jeans, shirts and boots. Six years later, Topolewski told the USPTO that TA had continuously used the METAL mark on these various items since 1999. This was apparently untrue and in a separate 2008 proceeding, the PTO concluded that this was a false statement, at least as to boots, and cancelled TA’s registration of the METAL mark. Topolewski almost immediately reapplied for the mark, this time through Metal Jeans, which obtained the “METAL” registration in 2013.

Metal Sport was started by a retired Finish power lifter and specializes in power lifting apparel, gear and accessories. The owner created a stylized “METAL” mark that he registered in August 2016 and used for power lifting apparel and gear that he marketed. He apparently drew and began using the stylized “METAL” mark sometime around 1997.

Metal Jeans sued Metal Sport for trademark infringement in 2015 claiming that the use of its stylized “METAL” mark created a likelihood of consumer confusion between the two marks. Both parties moved for summary judgment and the district court granted Metal Sport’s motion on the basis of the affirmative defense of unclean hands. Metal Jeans timely appealed to the Ninth Circuit.

The Ninth Circuit began by recognizing that normally a grant of summary judgment by a district court in a trademark infringement claim is reviewed “de novo with all reasonable inferences drawn in favor of the non-moving party.” The Ninth Circuit also recognized that grants of equitable relief, on the other hand, are generally reviewed under an abuse of discretion standard. The doctrine of unclean hands is based in equity and is a form of equitable relief. The Ninth Circuit noted that it had decided two prior cases involving summary judgment on the issue of unclean hands but neither decision addressed the specific standard of review that would apply.

The Ninth Circuit continued by noting that a number of cases had recognized the general principle that other equitable doctrines such as acquiescence and/or laches should be analyzed under an abuse of discretion standard. The Ninth Circuit reasoned that it was “a modest and obvious step to extend these previous holdings to the present situation,” i.e., to the application of the unclean hands doctrine. The Ninth Circuit concluded that “the appropriate standard of review of a district court’s determination to grant summary judgment on the affirmative defense of unclean hands is abuse of discretion.” The Ninth Circuit noted, however, that other aspects relating to the granting of summary judgment would continue to be reviewed under a de novo standard, such as “whether the district court inappropriately resolved any disputed material facts in reaching its decision.”

In a separate unpublished memorandum that it issued simultaneous with the opinion discussed above, the Ninth Circuit concluded that the district court had erred in granting summary judgment on the basis of unclean hands. In that memorandum, the Ninth Circuit recognized that, “to constitute unclean hands, a defendant must show (1) that the plaintiff’s conduct is inequitable and … (2) relates [directly] to the subject matter of its claims.’” The Ninth Circuit next reviewed the six examples of the alleged misconduct that the district court relied upon in finding that unclean hands should apply. These included: (1) Metal Jeans’ various accounts of how it acquired the mark; (2) Metal Jeans’ representation that it had owned the “METAL” mark at the time TA had in fact owned it; (3) Topolewski had apparently advised the PTO that Metal Jeans was a “premium denim lifestyle clothing brand,” which may not have been accurate; (4) Metal Jeans apparently sourced some of its products from China despite having a “American made, American worn” slogan; (5) Topolewski testified inconsistently as to how he had assigned the goodwill and trademarks between TA and Metal Jeans; and (6) Topolewski’s apparent false statement to the PTO that had led to the cancellation of the mark in 2008.

The Ninth Circuit continued by holding that the district court had improperly resolved several disputes of material fact as to the first five examples in the movant’s favor as opposed to the non-moving party. Furthermore, the Ninth Circuit held that five of the six examples did not “necessarily relate directly to the trademark claim Metal Jeans asserts in this case;” did not appear to cause any harm; and did not evidence any malintent by Metal Jeans. The Ninth Circuit noted that although a jury could later find that each of these examples did evidence unclean hands (as the district court found in ruling on summary judgment), the Ninth Circuit ruled that it was equally likely that the jury could reach other reasonable conclusions. Thus, the Ninth Circuit held that the district could had erred in grating summary judgment on the basis of unclean hands.

Parties litigating trademark claims need to remember in moving for summary judgment and subsequent appeals, which standard of review the appellate court may apply as to certain issues, especially as to equitable defenses.

The validity of a United States patent can be challenged in federal court litigation.  Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process.

The PTO provides three procedures by which a patent can be challenged: inter partes review (IPR), post grant review (PGR), and ex parte reexamination.  In IPRs and PGRs, the challenger and the patent owner both participate, and the proceedings are handled by the Patent Trial and Appeal Board (PTAB).  In an ex parte reexamination, the challenger is not involved after the request for reexamination has been filed, and the proceeding is handled by the PTO examiners.

In IPRs and PGRs, anyone except the patent owner may file a petition to challenge the patent.  The filing fees are high, $41,500 for an IPR and $47,500 for a PGR, with additional fees depending on the number of claims challenged.  The proceedings are handled by a three-judge panel of administrative judges with technical background in the field of the patent.  There are two phases in these proceedings.  The first phase consists of the filing of the petition by the challenger, the filing of a response by the patent owner, and the decision whether to institute the IPR or PGR by the PTAB.  If the PTAB institutes the IPR or PGR, then the second phase (the trial phase) begins.  The second phase consists of discovery (more limited than in litigation), briefing, an oral hearing, and a final written decision by the panel.  The entire process from institution to the final decision should take no more than 12 months.  The parties may appeal the decision to the Federal Circuit Court of Appeals. Continue Reading How to Challenge a Patent in the PTO