SCOTUS to Review Intent Standard for Invalidation of Copyright Registrations

Author: Reid Dammann

Under the current version of the Copyright Act, registration of a copyright claim is not a condition of copyright protection. 17 U.S.C. § 408(a). However, a certificate of copyright registration is a prerequisite to bringing a civil copyright infringement action. See 17 U.S.C. § 411(a). By statute, a certificate of registration satisfies this prerequisite “regardless of whether the certificate contains any inaccurate information,” unless the following two-part test is met: “(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(1).

Section 411(b)(2), in turn, requires that courts seek the advice of the Register of Copyrights before finding that a certificate of registration does not support an infringement action. Palmer/Kane LLC v. Rosen Book Works LLC, 188 F. Supp. 3d 347, 348 (S.D.N.Y. 2016) (“[C]ourts are in agreement that the provision is mandatory in nature[.]”) (citing DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 623 (7th Cir. 2013) (“Instead of relying solely on the court’s own assessment of the Register’s response to an inaccuracy, the statute obligates courts to obtain an opinion from the Register on the matter.”)). In other words, a court must first obtain the Register’s guidance before finding that the provision of knowingly inaccurate information would have caused the Register to refuse registration. Although the statute by its terms requires a referral “in any case in which inaccurate information described under [§ 411(b)(1)] is alleged,” 17 U.S.C. § 411(b)(2), to protect against the potential for abuse inherent in this process, courts generally agree that they may first require the party seeking invalidation to establish as a factual matter that “(1) the registration application included inaccurate information; and (2) the registrant knowingly included the inaccuracy in his submission to the Copyright Office.” Palmer/Kane LLC, 188 F. Supp. 3d at 349.

Thus, before referring the issue to the Register, a court may determine whether the allegedly inaccurate information is, in fact, inaccurate. Where the factual record is insufficient to make such a determination, a court may choose to “await further factual development at the summary-judgment stage or at trial before issuing a referral.” King-Devick Test Inc. v. NYU Langone Hosps., 17-CV-930 (JPO), 2019 WL 3071935, at *9 (S.D.N.Y. July 15, 2019). If a court ultimately determines that a registration contains inaccuracies, the Register will then “advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(2). The Court “must request a response from the Register before coming to a conclusion as to the materiality of a particular misrepresentation.” DeliverMed Holdings, LLC, 733 F.3d at 623-25 (discussing the “new procedure for courts confronted with a registration allegedly obtained by knowing misstatements in an application”).

Recently, the United States Supreme Court granted certiorari in Unicolors, Inc. v. H&M Hennes & Mauritz.1 In this case, Unicolors submitted thirty-one fabric designs to the U.S. Copyright Office, but indicated that all thirty-one designs were published as a bundle, presumably, to save fees. However, the Ninth Circuit has held that a collection of works may be registered under a single-unit registration only when the works were first published in a singular, bundled unit. Here, Unicolors testified at trial that some of the designs included in the single-unit registration were published to different customers at different times, so its submission of all thirty-one images as a “collection” contained known inaccuracies. The District Court did not request the Register of Copyrights’ insight because it held that invalidation required a showing at trial that Unicolors intended to defraud the Copyright Office—which was not shown. The Ninth Circuit remanded the case to the District Court on the grounds that the District Court erred by imposing an intent-to-defraud requirement for registration invalidation and erred in concluding that Unicolors’s application for copyright registration did not contain inaccuracies despite the inclusion of confined designs. The issue presented to the United States Supreme Court, is whether 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration.

As part of its argument, Unicolors asserts that the Ninth Circuit ruling creates a circuit split with the Eleventh Circuit, which holds that scienter is necessary. See Roberts v. Gordy, 877 F.3d 1024, 1029-30 (11th Cir. 2017) (holding that 411(b)(1) requires a showing of “intentional or purposeful concealment of relevant information” to render a registration invalid). Unicolors argues that the Eleventh Circuit in Gordy noted that the promulgation of the PRO-IP Act, which, according to the Gordy court, “amends section 411 of the Copyright Act to codify the doctrine of fraud on the Copyright Office in the registration process,” ostensibly reaching the opposite conclusion as the H&M panel. Id.

Unicolors argues that several opinions in the Ninth Circuit have implied that there is an intent-to-defraud requirement for registration invalidation. See L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 853-54 (9th Cir. 2012); see also Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1145 (9th Cir. 2003) (stating that inaccuracies “do not invalidate a copyright… [unless] the claimant intended to defraud the Copyright Office by making the misstatement”) (quoting Urantia Found. v. Maaherra, 114 F.3d 955, 963 (9th Cir. 1997)); Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486-87 (9th Cir. 2000).

Unicolors further argues that the Ninth Circuit’s supposed misinterpretation of 17 U.S.C. 411(b) contravenes legislative and administrative guidance, and that its position is in line with the relevant administrative and legislative bodies as well as the leading copyright treatise. According to Unicolors, these cited authorities correctly interpret that the PRO-IP Act codifies the doctrine of fraud on the Copyright Office. See U.S. Copyright Office, Annual Report of the Register of Copyrights, Fiscal Year Ending September 30, 2008 12–13 (2008) (“passage of the PRO IP Act strengthens the intellectual property laws of the United States” and specifically, “it amends section 411 of the copyright law to codify the doctrine of fraud on the Copyright Office in the registration process.”); see also U.S. Copyright Office, Annual Report of the Register of Copyrights, at 9 (2009) (Copyright Office further clarified that subsection (b) was added to section 411 “to create a new procedure for infringement actions [ . . . ] on issues that may involve fraud on the Copyright Office.”); 2 MELVILLE NIMMER AND DAVID NIMMER, NIMMER ON COPYRIGHT 7.20 (2018) (“[t]he legislative history for the PRO IP Act explains that the amendment aims to close the loophole whereby ‘intellectual property thieves’ argue ‘that a mistake in the registration documents, such as checking the wrong box on the registration form, renders a registration invalid and thus forecloses the availability of statutory damages’”).

Unicolors also contends that not only is there a split in the Eleventh Circuit, but also that there is a split in the Third Circuit because the Third Circuit requires an “intentional omission” of a material fact to invalidate, noting that “mere inadvertence,” is “insufficient.” See Mon Cheri Bridals, Inc. v. Wen Wu, 383 F. App’x 228, 232 (3d Cir. 2010) (citations omitted). Unicolors also posits that there is a further split in the Seventh Circuit, which has indicated, though not explicitly held, that 411(b)(1) requires a showing of fraud as well. In analyzing applicability of 411(b)(1), the Seventh Circuit in DeliverMed Holdings, LLC, 734 F.3d at 616, 625, fn.3, referred to the statutory provision as “the fraud on the Copyright Office inquiry” and weighed facts to determine if there was a knowing misrepresentation sufficient to seek to invalidation.

H&M’s position is that there is no circuit split, Roberts v. Gordy is an outlying case, and that this exact issue in this matter has already been presented to the United States Supreme Court, who previously denied certiorari. See Gold Value v. Sanctuary Clothing, 925 F.3d 1140 (9th Cir. 2019), cert. denied (no such intent-to-defraud requirement). Further, H&M argues that the statutory language is clear and that there is no need to consult legislative history. H&M argues that the plain meaning of the statute controls – stating “[a]s this Court has stated repeatedly, ‘when the meaning of the statute’s terms is plain, our job is at an end. The people are entitled to rely on the law as written, without fearing that courts might disregard its plain terms based on some extra-textual consideration.” Bostock v. Clayton County, Georgia, 140 S. Ct. 1731, 1749 (2020) (citing Carcieri v. Salazar, 555 U.S. 379, 387 (2009)). The express languge of 411(b) states only that the “inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate[,]” and thefore, by the statutory plain terms, a higher degree of scienter—i.e., fraud—is not required. 17 U.S.C. § 411(b)(1)(A).

Intent-to-defraud requires that one willfully deceives, with intent to induce another to alter position to the other’s injury or risk. This could come in the form of an intentional misrepresentation, negligent misrepresentation, concealment, or a false promise. Courts generally provide that fraud requires a misrepresentation, knowledge that the misrepresentation is false, intent to deceive, justifiable reliance by the victim, and resulting damages, so it is plain to see that a decision by the United States Supreme Court in this matter effectively determines whether it will be more difficult to invalidate a copyright registration in future copyright litigation.

About the author: Reid Dammann is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on litigation matters involving copyright, trademarks, trade secrets, and patents, with a particular emphasis on software. Mr. Dammann is a registered patent attorney with an advanced dual degree in Computer Science and Electrical Engineering. Mr. Dammann’s biography can be found here.
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1 959 F.3d 1194 (9th Cir. 2020)

When Communications Confer Personal Jurisdiction: A Cautionary Tale for Clients and Attorneys

Author: Garrett Fahy

Introduction

It is a question many intellectual property lawyers navigating a potential infringement case have undoubtedly pondered: how many communications with opposing counsel over a budding infringement dispute are enough to subject the attorney’s client to personal jurisdiction in the infringer’s home (and possibly foreign) forum? (And if they have not pondered it, they now have good reason to.)

In Trimble, Inc., Innovative Software Engineering, LLC v. Perdiemco LLC (2019-2164) (May 12, 2021), the Federal Circuit defined the number and type of communications and contacts that will subject a client to personal jurisdiction in a foreign and potentially inconvenient forum in a declaratory judgment patent infringement case: twenty-two communications in a three month period, even in service of potential settlement discussions, is enough to subject an attorney’s client to jurisdiction in a foreign forum if the court finds the communications constitute sufficient purposeful availment.

Background

Defendant PerDiemCo, LLC (“PerDiemCo”), a Texas LLC, is the owner of eleven patents (via assignment) having a common specification and relating to electronic logging devices and geofencing. Electronic logging devices log the hours and activities of truck and other commercial vehicle drivers to help their employers comply with federal and state safety regulations. PerDiemCo accused Trimble, Inc. (“Trimble”) and Innovative Software Engineering, LLC (“ISE”) of infringement in letters and other communications in the fall of 2018. Robert Babayi, a resident of Washington, D.C., is the sole owner, officer and employee of PerDiemCo, which rented office space in Marshall, Texas. Mr. Babayi had never visited the rental office in Marshall and had no employees in Marshall.

The declaratory judgment Plaintiffs, Trimble and its wholly owned subsidiary ISE, manufacture and sell positioning and navigation products and services that rely on the Global Positioning System (GPS). Trimble and ISE offer electronic logging devices and related services, and Trimble sells geofencing products. Trimble is incorporated in Delaware and headquartered in Sunnyvale, California (in the Northern District of CA). Trimble’s subsidiary, ISE, is an Iowa LLC with its headquarters and principal place of business in Coralville, Iowa.

Mr. Babayi of PerDiemCo launched the first communicative salvo in October of 2018, sending a letter to ISE in Iowa accusing ISE’s products and services of using technology covered by at least PerDiemCo’s electronic-logging-device patents. Mr. Babayi also attached to his letter a draft and unfiled complaint for the Northern District of Iowa which included a claim chart, proposed a license to PerDiemCo’s patents, and attached a draft non-disclosure agreement. In response to a letter from Trimble’s chief IP counsel, Mr. Babayi responded by alleging Trimble also infringed PerDiemCo’s patents and included a claim chart. Further calls followed and PerDiemCo then offered to enter into binding mediation.

In subsequent communications, PerDiemCo made additional allegations of infringement against Trimble concerning electronic logging devices, bringing the total number of asserted patents to eleven, and later alleged Trimble’s geofencing products infringed claims of six of the eleven already asserted patents that related to geofencing. In the course of these communications, PerDiemCo threatened to sue Trimble for patent infringement in the Eastern District of Texas and identified counsel it had retained for that purpose.

Plaintiffs’ Complaint for Declaratory Judgment of Non-Infringement

In January of 2019, Trimble and ISE filed a complaint for declaratory judgment of non-infringement in the Northern District of California, and alleged that PerDiemCo was subject to jurisdiction under a specific jurisdiction theory. PerDiemCo moved to dismiss, arguing the court lacked personal jurisdiction under Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998). The district court held it lacked specific personal jurisdiction over PerDiemCo because even though Trimble had established PerDiemCo’s minimum contacts through its cease-and-desist letters and other communications that were purposefully directed at Trimble, a California resident, and Trimble’s declaratory judgment claim arose out of PerDiemCo’s activities, the court, applying Red Wing, held that exercising specific personal jurisdiction over PerDiemCo would be constitutionally unreasonable.

The Federal Circuit’s Opinion

The question for the Federal Circuit was whether Red Wing precluded the federal district court for the Northern District of California from asserting personal jurisdiction over PerDiemCo, based on its communications to Trimble. The court determined Red Wing does not preclude personal jurisdiction, and the district court had personal jurisdiction over PerDiemCo, a Texas LLC. Why?

First, the exercise of jurisdiction focuses on the “nature and extent of ‘the defendant’s relationship to the forum state,’” Ford Motor Co. v. Mont. Eighth Jud. Dist. Ct., 141 S. Ct. 1017, 1024 (2021) (“Ford”) (quoting Bristol-Myers Squibb Co. v. Superior Ct. of Cal., 137 S. Ct. 1773, 1779 (2017)), and the exercise of specific personal jurisdiction requires that the “plaintiff’s claims… ‘must arise out of or relate to the defendant’s contacts’ with the forum.” Id. The defendant must take some act by which it purposefully avails itself of the privilege of conducting activities within the forum state, and the contacts must show that the defendant deliberately reached out beyond its home. Id.

In Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998), Hockerson-Halberstadt, Inc. (“HHI”) a Louisiana corporation with its principal place of business in New Mexico sent three demand letters in a three-month period to Red Wing Shoe Co., a Minnesota corporation with a principal place of business in Minnesota. Id. at 1357. HHI and Red Wing exchanged letters, in the course of which HHI made further allegations of infringement against Red Wing and offered Red Wing a nonexclusive license. Id. The court held HHI’s efforts were insufficient to constitute purposeful availment of the forum state on the grounds that a patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement, and basing personal jurisdiction on such contacts alone would not comport with principles of fairness. Id. at 1361. The court also said the cease-and-desist letter that included an offer of a license was more like an offer for settlement rather than an arms-length negotiation in anticipation of a long-term continuing business relationship. Id. And principles of fair play and substantial justice afforded a patentee sufficient latitude to inform others of its patent rights without subjecting itself to jurisdiction in a foreign forum. Id. at 1360-1361.

Post-Red Wing legal developments also set PerDiemCo’s actions apart from the plaintiff in Red Wing and rendered appropriate the district court’s exercise of jurisdiction over PerDiemCo.

First, the Supreme Court clarified in cases after Red Wing that the personal jurisdiction analysis in a patent case is not different on account of special patent policies. SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954, 964 (2017). In other words, there is no patent-specific statute for personal jurisdiction purposes. TC Heartland LLC v. Kraft Foods Grp., 137 S. Ct. 1514, 1518 (2017).

Second, the Supreme Court has held that communications sent into a state may create specific personal jurisdiction, depending on the nature and scope of such communications. South Dakota v. Wayfair, Inc., 138 S. Ct 2080 (2018). As the Court said in Quill Corp. v. North Dakota, 504 U.S. 298, 308 (1992), an entity that repeatedly sends communications into a forum state “clearly has ‘fair warning that its activities may subject it to the jurisdiction of a foreign sovereign.’” And the Federal Circuit has tracked this reasoning, finding that in the context of patent litigation, communications threatening suit or proposing settlement or patent licenses can be sufficient to establish personal jurisdiction. Jack Henry & Associates, Inc. v. Plano Encryption Technologies, LLC, 910 F.3d 1199 (Fed. Cir. 2018) (exercise of personal jurisdiction over a defendant was reasonable after the defendant sent communications to eleven banks located in the forum, identifying the patents, alleging the Banks were infringing the patents and inviting non-exclusive licenses.).

Third, the Court’s decision in Ford means that “a broad set” of a defendant’s contacts with a forum are relevant to the minimum contacts analysis. There, in deciding the question whether Montana’s and Minnesota’s courts could exercise personal jurisdiction over Ford for accidents involving Ford cars that took place in the states despite the vehicles not being sold in either state, the Court focused not on the contacts related to the specific vehicles, but Ford’s broader efforts to sell similar vehicles in each state. Ford’s “veritable truckload of contracts” with the states were relevant to analyzing the connection between Ford’s forum contacts and the plaintiff’s suit. Id. at 1031-32.

In short, while the “limited number of communications” in Red Wing—three—was not sufficient to constitute purposeful availment of the forum state, the Federal Circuit here found that twenty-two communications was more than sufficient in light of the nature of the communications, the expanding scope of the communications from ISE initially to later include Trimble and its alleged infringement, PerDiemCo’s retention and identification of counsel in Texas and its history of filing lawsuits all over the country, which was its core business effort. PerDiemCo “repeatedly contacted Trimble and ISE in California, accumulating an extensive number of contacts with the forum in a short period of time.”

The Federal Circuit found that PerDiemCo went far beyond informing plaintiffs of its patent rights without subjecting itself to jurisdiction, and its attempts to extract a license were more akin to an arms-length negotiation in anticipation of a longer term continuing business relationship, over which a district court may exercise jurisdiction. And, an obvious fact, Trimble was headquartered in California. Plaintiffs’ declaratory judgment action related to PerDiemCo’s contacts with California, and the minimum contacts or purposeful availment requirement was easily met here.

Finally, as to the five factors from Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) and World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) bearing on whether the exercise of personal jurisdiction would comport with fair play and substantial justice, the court found they all weighed in favor of exercising jurisdiction. First, as to the burden on the defendant, the court found given that PerDiemCo’s history of suing in Texas, threatening to sue in Iowa, its burden of litigating in California was only slightly greater than litigating in Texas or Iowa. Second, as to the forum state’s interest in adjudicating the dispute, the court found California and the Northern District had a significant interest as Trimble resides there. Third, as to plaintiffs’ interest in obtaining convenient and effective relief, Trimble had an interest in protecting itself from patent infringement by obtaining relief from a nearby federal court in its home forum, and Trimble’s employees and documents were located there. Fourth, as to the interstate judicial system’s interest in obtaining the most efficient resolution of controversies, that interest did not counsel against jurisdiction in California. Fifth and finally, as to the shared interest of the several states in furthering fundamental substantive social policies, the court found no conflict between the interests of California and any other state because the same body of patent law would apply regardless of the forum.

What It Means/Practice Pointers

In light of this recent decision, what is the message for IP attorneys practicing in this area? First, be mindful of the residency or principal place of business of the company you are accusing of infringement. A good question to ask before sending the third, fourth or fifth letter may be: does my client want to defend a lawsuit in ________ (home of alleged infringer)? Its home forum may soon be the forum for your client’s dispute, no matter how far it is from your client, or you. One practice pointer may be: do your research first and include every possible infringement allegation against the other company (or its parent or subsidiary entities) in one letter, rather than in an escalating series of letters addressing new/different allegations against different entities.

Conversely, if your client is being accused of infringement by a corporation and attorney from a foreign forum, keep up the contacts and communications and invite more – they may temporarily incur short-term costs but help your client keep a declaratory judgment case you file in its home forum, which could decrease long-term larger costs.

Second, if you are accusing a foreign corporation of infringement and repeatedly corresponding with that company’s counsel, be mindful that every aspect of your correspondence or matter handling, beyond the merits, will be scrutinized in the context of a personal jurisdiction analysis, and there is no trophy for most communications; there may be more travel costs.

Third, remember that escalations of the engagement beyond mere communications could amount to your client’s purposeful availment of the accused infringer’s forum. Thus, beyond letters, emails or phone calls, transmission of draft complaints, submission of potential license agreements, requests for mediation, and identification of counsel who will prosecute an infringement action are contacts courts will scrutinize in the context of the personal jurisdiction analysis. And courts may not look favorably on clients whose counsel increase the scope and scale of their accusations only to later claim an unbearable burden in litigating in the home forum of the accused party.

In short, what may be regarded as mere zealous or creative advocacy for a client could, absent any intention towards this end, land the client in a foreign forum. To borrow from the well-known phrase, the road to a foreign forum is paved with good intentions.

About the author: Garrett M. Fahy is Senior Counsel and a member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. He handles trademark, copyright, and patent litigation in a variety of commercial sectors and technologies.

An NFT Called “Copyright Infringement”

Author: Hannah Brown

This story begins in 1982, when Andy Warhol met Jean-Michel Basquiat. Warhol and Basquait, two famous and successful artists, agreed to collaborate on an exhibition. In 1985, photographer Michael Halsband went to dinner with Basquait, which led to Halsband agreeing to photograph the poster for Basquait and Warhol’s collaborative to be titled “Paintings.”1 Halsband then took this famous picture of Warhol and Basquait on July 10, 1985:

This photo has been referred to as “perhaps one of the most iconic portraits of the two artists.”2

Fast forward to 2019, and enter New York artist CJ Hendry. Hendry is known for her realistic and incredibly detailed drawings. Hendry created an illustration based on Halsband’s photograph. Halsband sent Hendry a cease and desist letter, claiming copyright infringement.3 Halsband demanded that Hendry destroy her work. Complying, Hendry spray-painted over the piece. A screenshot of Hendry’s Instagram story shows the final result:

In fact, Hendry recorded herself spray-painting over the image with black paint:4

But, where things get really interesting is what Hendry did next. She turned the video into an NFT, or non-fungible token, and explained infra, and put it up for auction. The NFT was titled “Copyright Infringement.” As of April 16, 2021, the NFT was listed for sale at $6,685 at SuperRare.com.5 A search of SuperRare’s website shows Hendry’s NFT is no longer for sale on the site. How much the NFT sold for, if at all, is unknown.

Before diving into the issue of NFTs and Hendry’s video, the first issue is, did Hendry infringe Halsband’s work with her drawing of the photo? The answer is likely yes. Hendry creates incredible and realistic drawings. A quick look at her Instagram account shows her true talent and the realistic and detailed art that she can create with (what appears to be) colored pencils.

While an image of Hendry’s drawing of Halsband’s photograph is not available on her Instagram account, the below screenshot of her Instagram story gives us an idea of what it must have looked like:

It appears Hendry more or less reproduced the photograph in her drawing. A copyright of a work of art may be infringed by reproduction of the object itself. Home Art Inc. v. Glensder Textile Corp., 81 F.Supp. 551 (S.D.N.Y. 1948) (oil painting reproduced in scarf); Leigh v. Gerber, 86 F.Supp. 320 (S.D.N.Y. 1949) (painting reproduced by publication without consent in a magazine).

After receiving the cease and desist letter, Hendry took to Instagram to express her frustration with Halsband and his legal team, saying that she looks up to Halsband, and wondering how her drawing could not be seen as a compliment to him and his work. As noted above in her Instagram post, Hendry notes she was never going to sell the piece and was never going to profit off of it. However, a person can be liable for copyright infringement even if they have not gained profits from the infringing work. A plaintiff may recover statutory damages “whether or not there is adequate evidence of the actual damages suffered by plaintiff or of the profits reaped by defendant,” Harris v. Emus Records Corp., 734 F.2d 1329, 1335 (9th Cir. 1984), “‘to sanction and vindicate the statutory policy’ of discouraging infringement.” Peer Int’l Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1336 (9th Cir. 1990) (quoting F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 232 (1952)).6

Hendry could argue that her work was fair use of Halsband’s photograph under 17 U.S.C. § 107. In analyzing fair use, courts consider: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Id. But, as noted, Hendry did not take this issue to court and did not fight Halsband’s claim with a fair use defense. Instead, she destroyed the work and sold the video of her doing so as an NFT.

A brief explanation of an NFT is helpful. NFT stands for non-fungible token. NFTs are digital files, for example videos or digital art, and the buyer of the NFT gets to claim that they own the original digital work.7 NFTs are called “non-fungible” because they are unique, original, and cannot be interchangeable (unlike dollars bills or Bitcoin currency.) Your first thought may be: why would anyone ever pay for a digital work that they could download for free? You’re not alone in this thought, and as one author put it: “If all of this sounds bizarre, that’s because it is. The idea of paying for the symbolic ownership of a digital image that lives somewhere on the web and can be captured on a screenshot or right-click-download within seconds, is so alien it seems either idiotic or ironic.”8 But there is certainly a market for them, with videos and tweets selling for hundreds of thousands or millions of dollars.9

This leads to two other questions: (1) Does Hendry’s video of her painting over her drawing created using Halsband’s photograph, constitute copyright infringement? and (2) Can Hendry then copyright that video/NFT?

The answer to the first question is: maybe. While certainly Hendry’s video of her spray painting over her work is original content, it is likely that the video contains, at least in part, an image of Halsband’s copyrighted photograph (see the image above showing the drawing as Hendry begins to paint). However, it is also possible that her use of the photograph in the video as a whole was de minimis. “For an unauthorized use of a copyrighted work to be actionable, the use must be significant enough to constitute infringement.” Newton v. Diamond, 388 F.3d 1189, 1192–93 (9th Cir. 2004). “Even where there is some copying, that fact is not conclusive of infringement. Some copying is permitted. In addition to copying, it must be shown that this has been done to an unfair extent.” West Publ’g Co. v. Edward Thompson Co., 169 F. 833, 861 (E.D.N.Y.1909). If Hendry created a lengthy video of the spray painting, and the photograph was only in a small portion of that video, it is possible that this would not constitute infringement if her use of the photo was minimal when looking at the video as a whole.

The answer to the second question is: the NFT likely meets the criteria for copyrightability, but Halsband would probably object to the NFT becoming copyrighted. To be copyrightable, a work must be original and fixed in a tangible medium of expression. Hendry’s video of herself is original content (non-fungible literally means original and unique). But, the video would include Halsband’s copyrighted image. A copyright including another copyrighted image could lead to issues. Indeed, Hendry even titled her work “Copyright Infringement”!

In an analogous situation: a person cannot copyright a video of themselves if that video contains another’s copyrighted song. You may have heard of Nathan Apodaca, better known as 420Doggface208, or the man who went viral while skateboarding, drinking juice, and listening to Fleetwood Mac. Apodaca attempted to mint the video of himself as an NFT. But, because the video contained copyrighted material, i.e. the song, Stevie Nicks allegedly would not agree to Apodaca creating an NFT featuring her song.10

In fact, Halsband probably could have objected to Hendry making the video into an NFT, and profiting off of it, in the first place, due to use of his photograph. Halsband had sent Hendry a cease and desist letter already, and nothing would have stopped him from doing so again, this time requesting she desist from selling the NFT in an auction. Certainly, the point of Hendry’s NFT was to destroy what Halsband deemed an infringing work, and the NFT contained an image of that work. But, as noted above, Halsband may lose due to the de minimis defense.

With NFTs becoming more and more popular and profitable, this leads to an important piece of advice for anyone looking to create an NFT: consider whether your NFT is using another’s intellectual property. This could be use of a copyrighted image or even a song within the NFT. There does not appear to be any intellectual property requirements for creating an NFT; the creator does not have to certify that their work is completely their own creation.11 There is no agency needed to “approve” or “register” the NFT like is done when one seeks to register a copyright or trademark. It is important for creators of NFTs to review their work to ensure it is their original content, or that they have the permission from the author of the work, and that nothing they are putting online will get them in trouble.

About the author: Hannah Brown is an associate and member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group, specializing in trademark, copyright, and patent litigation. She is a former law clerk to the Hon. Janis Sammartino and Hon. Cynthia Bashant of the U.S. District Court, Southern District of California.
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1 https://www.swanngalleries.com/news/photographs-and-photobooks/2020/06/the-making-of-a-portrait-michael-halsbands-photograph-of-andy-warhol-and-jean-michel-basquiat/
2 https://www.swanngalleries.com/news/photographs-and-photobooks/2020/06/the-making-of-a-portrait-michael-halsbands-photograph-of-andy-warhol-and-jean-michel-basquiat/
3 https://hypebeast.com/2021/4/cj-hendry-copyright-infringement-nft-auction-superrare-release
4 https://hypebeast.com/2021/4/cj-hendry-copyright-infringement-nft-auction-superrare-release
5 https://hypebeast.com/2021/4/cj-hendry-copyright-infringement-nft-auction-superrare-release
6 This would be different if Hendry were fighting a criminal copyright infringement claim. To prevail on an allegation of criminal copyright infringement, a plaintiff must establish “infringement, that the infringement was willful, and that it was engaged in for profit.” Mattel, Inc. v. MGA Ent., Inc., 782 F. Supp. 2d 911, 1042 (C.D. Cal. 2011) (quoting United States v. Bily, 4066 F. Supp. 7266, 733 (E.D. Pa. 1975)).
7https://www.theverge.com/22310188/nft-explainer-what-is-blockchain-crypto-art-faq
8 https://www.wired.com/story/nfts-boom-collectors-shell-out-crypto/
9 .
10 https://www.lamag.com/article/nft-law-copyright/
11 https://help.foundation.app/en/articles/4742869-a-complete-guide-to-minting-an-nft#:~:text=Mint%20your%20NFT%3A%20Confirm%20that,the%20same%20with%20your%20wallet.

Is Fair, Fair? A Look into the Supreme Court’s Landmark Decision in Google v. Oracle

Author: Ross Kirkbaumer

After a decade of back-and-forth battles in the district and circuit courts, the Supreme Court ruled that Google’s copying of Sun Java’s API was fair use, reversing the Federal Circuit’s ruling that Google’s copying was not a fair use.[1]

Facts

Google obtained a startup firm by the name of Android, Inc. with the goal to develop a software platform for smartphones. Google wanted the Android platform to be “free and open, such that software developers could use the tools found there free of charge.”

During this time, programmers were familiar with using a programming language known as Java created by Sun Microsystems (“Sun”) on its Java SE platform. Google began speaking with Sun about possibly licensing the entire Java platform for the Android smartphone technology, but negotiations were halted, and Google started building a new platform.

Since programmers were already familiar with Java, Google copied around 11,500 lines of code from the Java SE platform so that programmers would be able to easily work with the Android platform. The 11,500 lines of code were part of tool called an Application Programming Interface (“API”).

Specifically, Google copied the “‘declaring code,’ instructions that describe pre-written programs in Java.”[2] According the Court, “[W]ithout that copying, programmers would need to learn an entirely new system to call up the same tasks.”

Fair Use

Under the Copyright Act, 17 U.S.C. § 107:

“[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The Majority Decision

With Justice Breyer delivering the opinion for the majority, the Court decided not to take up the issue of whether the lines of code were copyrightable stating that “purely for argument’s sake . . . the entire Sun Java API falls within the definition of that which can be copyrighted.” As discussed below, the Court held that the four factors above weighed in favor of fair use.

First Factor

The Supreme Court stated that the copied declaring code “embodies a different form of creativity,” highlighting the fact that Sun’s intent was to attract programmers and to make its API “open.” Additionally, the Supreme Court contrasted the declaring code from computer programs by explaining the declaring code’s significance “lies in its efforts to encourage programmers to learn and to use [Sun Java’s API] so that they will use (and continue to use) Sun-related implementing programs that Google did not copy.”

Accordingly, the Court concluded that “the declaring code is, if copyrightable at all, further than most computer program[s] . . . from the core of copyright.” Because of this, the nature of the declaring code weighed in favor of fair use.

Second Factor

By examining the purpose and character of the work, the Court stated that Google’s purpose of using the Sun Java API was to create new products by expanding the use and usefulness of the Android-based smartphones. The Court explained that “[T]o the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative ‘progress’ that is the basic constitutional objective of the copyright itself.”

The Court emphasized that the jury during the district court proceeding heard a variety of ways in which re-implementing an interface can further the development of computer programs: (1) shared interfaces are necessary for different programs to speak to each other; (2) re-implementation of interfaces is necessary if programmers are able to use their acquired skills; (3) reuse of APIs is common in the industry; (4) Sun had used pre-existing interfaces in creating Java; and (5) Sun executives thought that widespread use of the Java programming language would benefit the company.

Since the purpose and character of Google’s copying was transformative, this factor weighed in favor of fair use.

Third Factor

With respect to the third factor, the Court contemplated whether the 11,500 lines of code should be viewed in isolation or as one part of the greater whole. The Court noted that Google did not copy the lines of code because of their creativity or beauty, but because programmers had already learned to work with Sun Java API’s system and it would have been incredibly difficult to attract programmers to build its Android smartphone system without the lines of code.

The Court ultimately held that “Google’s basic objective was not simply to make the Java programming language usable on its Android systems. It was to permit programmers to make use of their knowledge and experience using the Sun Java API when they wrote new programs for smartphones with the Android platform.” Therefore, the substantiality factor weighed in favor of fair use.

Fourth Factor

For this particular factor, the Court pointed out that it must consider the amount of money that Oracle might lose, the source of the loss, and the public benefits the copying will likely produce.

With respect to the amount of money lost, the Court explained that the jury could have found that Google and Android did not harm the actual or potential markets for Java SE. The Court noted that based on the evidence, Sun was poorly positioned to succeed in the mobile phone market and there was evidence that Android and Java SE were operating in two distinct markets.

In addressing the source of the loss, the Court stated that Google’s copying helped it make “a vast amount of money” and enforcement by Oracle could have given Oracle “a significant share of these funds.” The Court, however, affirmed this sub-factor weighed in favor of Google because the “source of Android’s probability ha[d] much to do with third parties’ . . . investment in Sun Java programs.”

In discussing the public benefits, the Court noted strongly that Oracle’s enforcement would risk harm to the public because the enforcement could have inhibited “creative improvements, new applications, and new uses developed by users who have learned to work with that interface.”

Since all four factors weighed in favor of fair use, the Supreme Court reversed the Federal Circuit’s decision against Google.

What About Justices Thomas & Alito?

In the dissenting opinion,[3] Justice Thomas did not understand why the majority avoided the principal question of whether declaring code is protected by copyright law. According to Justice Thomas, declaring code is copyrightable.

Additionally, Justice Thomas opined that the Federal Circuit was correct in determining that the harm Google cause to Oracle was overwhelming because “Google eliminated the reason manufacturers were willing to pay to install the Java platform,” and “Google interfered with opportunities for Oracle to license the Java platform to developers of smartphone operating systems.”

Impact of Google’s Victory

While the Supreme Court hailed Google as the victor, the jury is still out with respect to who benefits most from this decision. Professor Johnathan Barnett from the University of Southern California, Gould School of Law stated that “the devaluation of IP rights under rulings such as Google v. Oracle is likely to discourage investment by (and in) the inventors, artists, and entrepreneurs who stand at the foundation of a robust innovation economy.”[4] Chicago-Kent College of Law professor Lori Andrews asserts that the Court’s decision was “good news for developers looking to further interoperability of programs” and can have potential benefits for consumers.[5] Further, the Copyright Alliance believes that the decision “‘has the potential’ to broaden the fair use doctrine, something that would open the door to greater unauthorized use of copyrighted material,” and possibly more lawsuits.[6]

A copy of the Court’s opinion can be accessed here.

About the author: Ross Kirkbaumer is an associate and member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property enforcement and litigation. His bio can be found here.
________________________________________________________________________

[1] Justices Breyer, Roberts, Sotomayor, Kagan, Gorsuch, and Kavanaugh ruled in favor of fair use while Justices Thomas and Alito dissented. Justice Amy Coney Barrett did not take part in the consideration of the decision.
[2] Steven Tepp, Google v. Oracle Perspective: Google’s Android ‘Cheat Code’ was to Copy Oracle’s Code, IPWatchdog https://www.ipwatchdog.com/2020/08/05/google-v-oracle-perspective-googles-android-cheat-code-copy-oracles-code/id=123789/.
[3] Justice Thomas filed the dissenting opinion, in which Justice Alito joined.
[4] Johnathan Barret, Have tech platforms captured the Supreme Court?, The Hill https://thehill.com/opinion/judiciary/548813-have-tech-platforms-captured-the-supreme-court.
[5] Madeleine Carlisle, How Google’s Big Supreme Court Victory Could Change Software Forever, Time https://time.com/5952718/google-oracle-supreme-court/.
[6] Ted Johnson, Supreme Court Rules For Google Over Oracle In Closely Watched “Fair Use” Copyright Case; Industry Groups Express Concerns Over Impact On Content Protection, Deadline https://deadline.com/2021/04/google-supreme-court-oracle-motion-picture-association-1234727628/.

Supreme Court Refuses to Wade in to Federal Circuit Claim Construction Precedent

Author: Sean Flaherty

On Monday February 22, 2021, the Supreme Court denied certiorari to Akeva, L.L.C. in its dispute with Nike and Adidas regarding Akeva’s contention that the Federal Circuit applies separate and contradictory lines of authority to claim construction disputes. See No. 20-863, 2021 WL 666458 (U.S. Feb. 22, 2021)

In Akeva L.L.C. v. Nike, Inc., 817 F. App’x 1005, 1006 (Fed. Cir. 2020) a Federal Circuit panel of Justices Newman, O’Malley, and Chen ruled in a non-precedential opinion that the lower court “correctly construed ‘rear sole secured’ to exclude conventional fixed rear soles,” and thus affirmed the summary judgment decision of non-infringement issued by the District Court for the Middle District of North Carolina.

Pat No. 5,560,126 to Akeva, LLC provides that it “relates generally to an improved rear sole for footwear and, more particularly, to a rear sole for an athletic shoe with an extended and more versatile life…” Col. 1:9-12. Claim 25 reflected the exemplary dispute, which provided:

  1. A shoe comprising:
    an upper having a heel region;
    a rear sole secured below the heel region of the upper; and
    a flexible plate having upper and lower surfaces and supported between at least a portion of the rear sole and at least a portion of the heel region of the upper, peripheral edges of the plate being restrained from movement relative to an interior portion of the plate in a direction substantially perpendicular to a major axis of the shoe so that the interior portion of the plate is deflectable relative to the peripheral edges in a direction substantially perpendicular to the major axis of the shoe.

Akeva argued that the ’126 patent covered shoes having either (i) a flexible plate with a conventional / non-removeable rear sole, or (ii) shoes having a removeable or rotatable [ie non-fixed] rear sole.

The District Court disagreed and found that the term “rear sole secured” was construed to mean “’rear sole selectively or permanently fastened, but not permanently fixed into position,’ which would not include conventional rear soles that do not either detach or rotate.”

There was no dispute that the accused shoes had fixed rear soles, so summary judgment was awarded to Nike and Adidas.

On appeal, Akeva reasserted that the ‘126 Patent includes shoes having both conventional and non-fixed rear soles. Akeva argued for example that Figure 28 of the ‘126 patent disclosed only the flexible midsole plate and not a removeable / rotatable rear sole:

Akeva also argued that the specification’s statement ““[t]he graphite insert also need not be used only in conjunction with a detachable rear sole, but can be used with permanently attached rear soles as well” demonstrated that the patent included shoes with conventional rear soles.

The Federal Circuit disagreed, finding instead that the ‘126 specification “clearly disclaims shoes with conventional fixed rear soles.” Akeva L.L.C. v. Nike, Inc., 817 F. App’x 1005, 1012 (Fed. Cir. 2020). It reasoned that “the invention is ‘[a] shoe [that] includes a heel support for receiving a rotatable and replaceable rear sole to provide longer wear.” To Akeva’s argument about Fig. 28, the Federal Circuit concluded that the specification indicated merely that “the shoe may also include a graphite insert.” It was held that the specification’s statement about use of the graphite insert with “permanently attached rear soles” was limited to those “permanently attached” rear soles that were nonetheless rotatable. The Federal Circuit further observed that the “’purpose of the invention’ is to overcome rear sole wear with a shoe having a detachable or rotatable rear sole that may additionally include a graphite insert.”

In its petition for certiorari, Akeva argued that the Supreme Court should decide whether the Federal Circuit’s line of cases finding a “heavy presumption” in favor of the plain meaning of claim terms, or else, the Federal Circuit’s line of cases taking a “holistic” approach toward claim terms, should govern claim construction.

Akeva argued that the “heavy presumption” line of cases permit divergence from a claim term’s plain and ordinary meaning “only” if it meets an “exacting” standard and demonstrates (i) a “clear” disclaimer of claim scope, or (ii) “clear” lexicography. Akeva argued in contrast that the Federal Circuit’s “holistic” approach permits courts to depart from the plain and ordinary meaning of the patent claims even if there is not “exacting “disclaimer, for example when the specification describes “the present invention,” “disparages” prior art, describes certain embodiments “repeatedly” and “consistently,” or provides an “implied” definition.

Akeva argued that the Federal Circuit failed to mention or address the plain meaning of “rear sole secured,” let alone the “heavy presumption” line of precedent. Akeva claimed that the plain meaning of “rear sole secured” denoted having a rear sole “fixed” to the shoe regardless of duration, and therefore encompassed Adidas and Nike’s accused athletic shoes.

Akeva cited Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014); Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. 2019); and Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136-37 (Fed. Cir. 2011) in favor of the “heavy presumption” approach. For example, these authorities support contentions that a specification’s description of embodiments, use of the phrase “the present invention,” and disparagement of the prior art does not limit claim scope.

Akeva also recognized cases like Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005), AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed. Cir. 2005), and Abbott Labs v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) in applying the holistic approach. Akeva argued that “holistic cases are themselves often unpredictable as to what aspects of the specification or analysis thereof they might newly rely on to affect the scope of the claims-at-issue.”

According to Akeva, scholarly debate exists regarding the Federal Circuit’s “feuding” lines of authority on claim construction, citing Professors Bessen and Meurer in “Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk.”

Ultimately, the Supreme Court’s denial of certiorari means that there will continue to be substantial dispute over claim construction with each side likely to cite valid yet seemingly incongruous law at one another. District Courts will cite that body of law which is more supportive of its decision, and even though appellate review of claim construction decisions is usually de novo, Federal Circuit panels will find latitude to affirm District Court decisions governing construction, regardless of the methodology applied.

About the author: Sean Flaherty is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on litigation matters involving copyright, trademarks, trade secrets, and patents, as well as transactional matters related to intellectual property licensing. Mr. Flaherty is a registered patent attorney with a degree in Civil Engineering. Mr. Flaherty’s biography can be found here.

TTAB Considers Internet Archive Evidence in Opposition Proceeding

Author: Gregory Brescia

In Spiritline Cruises LLC v. Tour Mgmt. Serv’s, Inc., Oppo. No. 91224000, the TTAB held that use of the Internet Archive tool, known as the “Wayback Machine,” for evidentiary purposes was permitted. In making this determination, the Board addressed hearsay and authentication issues, and held: (1) the evidence fell within the business record hearsay exception; and (2) the affidavit submitted by Spiritline served as an appropriate means to authenticate the Wayback Machine printouts.

Background

Spiritline Cruises LLC (“Spirtline”) opposed the registration of the mark “CHARLESTON HARBOR TOURS,” owned by Tour Management Services, Inc. (“TMS”) for travel tours and boat charter related services. In its Notice of Opposition, Spiritline claimed that the “CHARLESTON HARBOR TOURS” mark is incapable of registration because it is geographically descriptive and has been used in its descriptive manner by many parties, in addition to Spritline, in the marketplace. In response, TMS claimed it made substantially exclusive use of the “CHARLESTON HARBOR TOURS” mark for at least five years prior to filing its application for registration and that the evidence submitted by Spiritline were largely recent uses in order to attempt to block registration of TMS’s application.

To support its claims, Spiritline submitted various printouts utilizing the Wayback Machine to illustrate third-party use of the “CHARLESTON HARBOR TOURS” mark between 2004 and 2015. The purpose of introducing this evidence was to discount TMS’s claim of substantial exclusive use of the “CHARLESTON HARBOR TOURS” mark. The evidence submitted by Spiritline was further accompanied by an affidavit instructing the Board of what the printouts were, how they were acquired, and the relevant dates associated therewith. The specificity provided by Spiritline’s affiant regarding the Internet crawling and archiving process was heavily regarded by the Board and served as a means to obviate authentication issues. Not surprisingly, TMS objected to the introduction of the Wayback Machine evidence claiming it was hearsay; however, the Board overruled and held that the evidence and supporting affidavit qualified under the business record exception. The Board further held that the evidence was properly authenticated and a proper foundation was laid via an affidavit to support the intended evidentiary use. As a result, the Board allowed numerous Internet printouts in to evidence to illustrate not only what they showed on their face, but to establish that TMS did not exercise substantially exclusive control over the “CHARLESTON HARBOR TOURS” mark. In fact, the evidence made it clear that the “CHARLESTON HARBOR TOURS” mark was frequently used on a number of third-party websites without challenge. Ultimately, after review and consideration of the various arguments and evidence submitted throughout the duration of the proceeding, the Board held TMS’s application for “CHARLESTON HARBOR TOURS” should be refused from registration.

The use of the Wayback Machine in this case is important because it provides specific instructions for properly authenticating and admitting such evidence in a TTAB action. As seen in this matter, the Wayback Machine evidence played a paramount role in establishing third party use of the “CHARLESTON HARBOR TOURS” mark. This tool can likewise be used to provide support on issues related to priority of use, abandonment, no bona fide use of the mark at the time of filing an in-use application, fraud, and issues related to a mark becoming generic. This TTAB ruling is instructive on avoiding potential hearsay and authentication related issues when using records from the Wayback Machine.

About the author: Gregory Brescia is a registered patent attorney and a Partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property prosecution and litigation. He also counsels clients on intellectual property enforcement and corporate transactions involving formation, compliance, and licensing. Mr. Brescia’s biography can be found here.

Supreme Court to Review Assignor Estoppel Doctrine

Author: Lara Garner

Assignor estoppel bars the seller of a patent from later attacking the patent’s validity in patent infringement litigation. The doctrine seems commonsensical. One shouldn’t be able to sell a patent and then later turn around and claim that that patent is worthless. It would seem reasonable, then, that the assignor should also be barred from challenging the validity of the assigned patent at the USPTO in an inter partes review. Not so according to the Federal Circuit.

Last April, the Federal Circuit “grapple[d] with the doctrine of assignor estoppel” in Hologic, Inc. v. Minerva Surgical, Inc. and affirmed, seemingly reluctantly, the decision of U.S. District Court for the District of Delaware. The district court had held that the assignor of a patent was not barred by assignor estoppel from relying on a Patent Trial and Appeal Board (PTAB) decision, affirmed by the Federal Circuit, invalidating patent claims in a inter partes review. Also affirmed was the district court’s holding regarding a second patent that the assignor was barred from asserting invalidity of that patent’s claims in the district court.

The Patents and the Parties

Hologic sued Minerva for infringement of certain claims of its U.S. Patent Nos. 6,872,183 and 9,095,348. Hologic had acquired the patents indirectly from the founder of Minerva.

In the late 1990s, Csaba Truckai, a founder of the company NovaCept, with his design team at developed a medical device called the NovaSure system and patented the technology. Both the ’183 and ’348 patents list Mr. Truckai as an inventor and Mr. Truckai assigned his interest in the patents to NovaCept.

In 2004, Cytyc Corporation acquired NovaCept for $325 million and in 2007 Hologic acquired Cytyc. Mr. Truckai left NovaCept and, in 2008, founded a competing company, the accused infringer, Minerva.

In the District Court and the Patent Office

Hologic brought its infringement suit against Minerva in 2015. Minerva asserted invalidity defenses in district court and also filed petitions for IPR in the Patent Office challenging the validity of both patents. Review of the ’348 patent was denied but the Board instituted review of the ’183 patent and eventually held the ’183 patent claims unpatentable as obvious. Hologic appealed.

The district court denied Minerva’s request to dismiss Hologic’s claim for infringement of the ’183 patent as the Board’s finding was “on appeal and does not have preclusive effect as to this action unless and until the appeal is resolved.” But Hologic’s motion for summary judgment was granted, for both patents, that the doctrine of assignor estoppel barred Minerva from challenging their validity in district court. The case then proceeded to trial and the jury found for Hologic.

Subsequent to trial, the Federal Circuit affirmed the Board’s decision that the ’183 patent claims are invalid as obvious. In the interim, the ’3348 patent expired.

In deciding post-trial motions, the district court determined that the Federal Circuit’s decision did not affect the jury verdict because invalidity of the ’183 patent did not affect the finding of infringement as to the ’348 patent, and the jury’s damages determination was adequately supported by the finding of infringement of the ’348 patent. The district court further held that invalidation of the ’183 patent did not affect its findings of assignor estoppel on the ’348 patent.” But the court denied Hologic’s request for supplemental and enhanced damages, and ongoing royalties for infringement of the asserted ’183 patent claims as moot.

At the Federal Circuit

On Appeal Hologic argued that assignor estoppel precluded Minerva from relying on the Federal Circuit’s Hologic decision to escape liability for infringement. It contended that “the final outcome of the IPR is irrelevant to the district court proceeding” and that “[t]o hold otherwise would be to hold that the America Invents Act (‘AIA’) abrogated the assignor estoppel doctrine in a district court infringement action.”

The Federal Circuit examined its precedent and disagreed.

The Federal Circuit had first examined and affirmed the vitality of the doctrine of assignor estoppel in 1988, defining it as “an equitable doctrine that prevents one who has assigned the rights to a patent…from later contending that what was assigned is a nullity.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988). The Federal Circuit noted that, while early Supreme Court cases had carved out exceptions to the general assignor estoppel doctrine, the Court did not abolish the doctrine. And, while some courts had questioned the vitality of the doctrine following a Supreme Court’s decision abolishing licensee estoppel, the Federal Court noted an important distinction between assignors and licensees: Whereas a licensee might be forced to continue to pay for a potentially invalid patent, the assignor has already been fully paid for the patent rights.

Assignor estoppel, serves important purposes including: “(1) to prevent unfairness and injustice; (2) to prevent one [from] benefiting from his own wrong; (3) by analogy to estoppel by deed in real estate; and (4) by analogy to a landlord-tenant relationship.”

The doctrine has since continued to be applied in various circumstance, often with the primary stated purpose of the prevention of unfairness and injustice. That said, the Hologic court reasoned that there are limits to the doctrine, including that it does not preclude an estopped party from arguing that the patentee is itself collaterally estopped from asserting a patent found invalid in a prior proceeding.

Based on those limitations, and expressly notwithstanding the seeming unfairness, the Federal Circuit concluded that assignor estoppel did not preclude Minerva from relying on the IPR affirmance to argue that the ’183 patent claims are void ab initio.

But it wasn’t all good news for Minerva. The Federal Circuit rejected its assertion that its invalidity challenge should not have been precluded in the district court, including declining Minerva’s invitation to abandon the doctrine of assignor estoppel entirely.

The incongruity of the result was not lost on the Court. Judge Scholl, who authored the opinion, wrote separately in the decision to highlight this “odd situation where an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office, but cannot do the same in district court.” Judge Scholl concluded:

I suggest that it is time for this court to consider en banc the doctrine of assignor estoppel as it applies both in district court and in the Patent Office. We should seek to clarify this odd and seemingly illogical regime in which an assignor cannot present any invalidity defenses in district court but can present a limited set of invalidity grounds in an IPR proceeding.

Notwithstanding her suggestion, the Court denied en banc rehearing, the parties petitioned the Supreme Court, and last month the Supreme Court granted Minerva’s petition for certiorari on the question of: “Whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”

About the author: Lara Garner is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on Intellectual Property litigation and counseling for patents, copyrights, trademarks, and trade secrets, and in a broad range of matters, including contract, technology, and privacy issues. Ms. Garner’s biography can be found here.

Second COVID Relief Bill Brings Relief to Trademark Plaintiffs, Expressly Restoring Presumption of Irreparable Harm to Trademark Cases

Author: Patrick Mulkern

On December 27, 2020, the President signed the Consolidated Appropriations Act for 2021. Although this legislation garnered considerable attention for its COVID-related relief provisions, it also incorporated the Trademark Modernization Act of 2020 (“TMA”)—first introduced back in March of 2020 as H.R. 6196. The TMA makes several sweeping changes to the trademark examination process, including new methods to address the growing number of registrations covering marks not actually used in commerce; protects the administrative law judges of the Trademark Trial and Appeal Board against certain challenges; and reinstates the presumption of irreparable harm (for those Circuits that had rejected it in recent years). On the whole, commentators speculate the changes brought about by the TMA may turn out to be some of the most consequential changes in the last thirty years.

Part I – Restoration of Presumption of Irreparable Harm

First, and foremost, the TMA expressly restores the presumption of irreparable harm that trademark infringement plaintiffs used to enjoy prior to the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 U.S. 388 (2006). Specifically, the TMA amends the Lanham Act to state a “plaintiff seeking an injunction shall be entitled to a rebuttable presumption of irreparable harm” upon a finding of a violation or likelihood of success. See H.R. 6196 § 6 (amending 15 U.S.C. § 1116) (emphasis added). This change directly addresses a circuit split in how some trademark plaintiffs were treated when seeking injunctive relief—codifying what some Circuits (i.e., Fifth and Eighth) already applied in trademark litigation, and rejecting what other Circuits (i.e., Third, Ninth, and Eleventh Circuits) had been doing post-eBay. Prior to the TMA, a trademark owner’s change of success in obtaining injunctive relief was therefore entirely dependent on the geographic location of its case—clearly encouraging forum shopping. Now, such inconsistencies should be resolved.

Two questions remain, however, with respect to the presumption. One, while the other sections of the TMA expressly state when they are to become effective (see infra), the irreparable harm portion of the TMA contains no such express language. Instead, Section 6(b) of the TMA simply states that this amendment “shall not be construed to mean that a plaintiff seeking an injunction was not entitled to a presumption of irreparable harm before the date of the enactment of this Act.” While not a paragon of clarity, this language appears to invoke arcane and technical rules regarding “enactment” more fit for Schoolhouse Rock1—all of which suggest the presumption was restored the moment the President signed the bill into law.2 It is possible this language may result in a deluge of motions for reconsideration similar to those seen in the patent context following the Supreme Court’s ruling on venue in T.C. Heartland LLC v. Kraft Foods Grp. Brand LLC, 137 S.Ct. 1514 (2017).

Two, there is uncertainty with respect to whether the “restored” presumption shifts the burden of persuasion or merely the burden of production. It would appear that the presumption that existed prior to eBay was merely one of production—with courts requiring the movant satisfy its burden of persuasion in establishing irreparable harm.3 The default, as provided for by the Federal Rules of Evidence, further supports such an interpretation—with Fed. R. Evid. 301 explaining that any presumption is one “of producing evidence to rebut the presumption” and “does not shift the burden of persuasion.” Ultimately, notwithstanding the presumption, a defendant could potentially put the onus back on plaintiff where the defendant is able to present prima facie evidence regarding the lack of irreparable harm.

Part II – Changes to TM Examination and Post-Registration Review Processes

Next, the TMA provides changes to both inter partes trademark examination procedures and ex parte challenges to existing registrations.

1. Codification of Letters of Protest Procedures

Section 3 of the TMA expressly permits submission of third party evidence, formalizing the previous “Letters of Protest” process. The new formalities now require the submission include a description/identification of the relevant ground for refusal and requires the PTO to act on any such submissions within two months. The amendments also permit the PTO to charge a fee for submitting such evidence.

2. Allowing Shortened Time to Respond to Office Actions

Section 4 of the TMA amends the previously ubiquitous six month deadline for responses to office actions, and grants the PTO authority to prepare and promulgate regulations which will govern how and what the new/different response periods will be. The new response deadlines will range from two to six months, and the TMA also allows for extensions of time under those same forthcoming regulations.

3. Ex Parte Challenges to Subsisting Registrations

Section 5 of the TMA creates two new avenues for cancelling registrations, both of which serve as ex parte alternatives to traditional cancellation proceedings—all meant to address the growing concern of an overcrowded registration. The first, creating a new Section 16A entitled “Ex Parte Expungement,” allows for the expungement of registrations that have never been used in commerce. Challenges under this new section can be filed during the first 3 years of a registration’s existence. The second, creating a new Section 16B entitled “Ex Parte Reexamination,” allows for a challenge to registrations that were not in use (a) as of the date of first claimed use, or (b) when the application was filed. Challenges under this new section can be filed during the first 5 years of a registration’s existence. As above, the PTO Director was also authorized to develop and promulgate enacting regulations.

Unlike the changes identified above in Section 6 (restoring the presumption of irreparable harm), the changes enacted in Sections 3, 4, and 5 are all set to take effect in one year. This will provide the PTO time to ramp up the administrative infrastructure needed to implement these changes.

Part III – Confirming Independence of TTAB ALJs

Finally, Section 8 of the TMA provides express statements regarding the scope of the PTO Director’s authority with respect to the administrative law judges (ALJs) of the Trademark Trial and Appeal Board (TTAB). Specifically, it amends the Lanham Act to entrust the Director with “the authority to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board.” The changes, of course, do not require the Director to reconsider, modify, or set aside any particular TTAB decisions—it simply provides the Director authority to do so. These changes come in response to recent challenges in which litigants have attempted to argue that the TTAB’s ALJs are unconstitutional “Officers of the United States” (as they are not confirmed by the Senate) because of a perceived lack of control by the PTO Director.4

Conclusion

While the restoration of the presumption of irreparable harm may capture the most attention, and despite providing harmony to the circuits in resolving a long-standing split, it is unclear whether such a change will result in much change in practice. Its most lasting effect may simply be one of procedure—reducing the amount of forum shopping. For trademark prosecutors, the changes to examination procedures are much more likely to have real world, day-to-day impact—with suddenly differing deadlines (no longer uniform 6 month responses), formalized requirements for Letters of Protest submissions, and new methods of seeking cancellation of unused registrations.

About the author: Patrick J. Mulkern is senior counsel and a member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property litigation and transactional matters, with a particular emphasis on patent, trademark, and trade secret litigation. Mr. Mulkern is a registered patent attorney and his biography can be found here.
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1 See Lander and Berkowitz, P.C. v. Transfirst Heatlh Servs., Inc., Case No. 05-cv-527 (E.D. Mo.), Dkt. 21 at n.1 (holding the date of a law’s “enactment” was “the day when it was signed into law by the President” and observing: “Although it is certainly not binding precedent, the parties may recall a popular episode of the television series Schoolhouse Rock” titled I’m Just a Bill. In that episode, Bill sang, “I’m just a bill/Yes, I’m only a bill/And if they vote for me on Capitol Hill/Well, then I’m off to the White House/Where I’ll wait in a line/With a lot of other bills/For the president to sign/And if he signs me, then I’ll be a law/How I hope and pray that he will/But today I am still just a bill.”).
2 See, e.g., Gozlon-Peretz v. United States, 498 U.S. 395, 404 (1991) (“It is well established that, absent a clear direction by Congress to the contrary, a law takes effect on the date of its enactment.”); Garnder v. Collector of Customs, 73 U.S. 499, 406 (1867) (“The simple signing of his name at the appropriate place is the one act which the Constitution requires of [the President] as the evidence of his approval, and upon his performance of this act the bill becomes a law.”).
3 See, e.g., Peter Letterese & Assoc., Inc. v. World Inst. of Scientology Enterps., Inc., Case No. 04-cv-1178, 2005 WL 8167094, at *1 (S.D. Fla. May 27, 2005) (finding plaintiff failed to establish irreparable harm despite presumption).
4 See Schiedmayer Celesta GmbH v. Piano Factory Grp., Case No. 2020-1196 (Fed. Cir. No. 8, 2019); Coca-Cola Co. v. Somohano-Soler, Case No. 2020-1245 (Fed. Cir. Nov. 27, 2019).

Lady A vs. Lady A: (Trademark) Battle of the Bands

Author: Hannah Brown

The tragic death of George Floyd last summer sparked nationwide protests and activism. This response and demand for change led to noteworthy decisions by many corporations and entities. Quaker Oats announced its plans to rebrand its Aunt Jemima brand of syrup and pancake mix because the company recognized that “Aunt Jemima’s origins are based on a racial stereotype.” The companies that own Mrs. Butterworth’s and Cream of Wheat also proclaimed their intent to reshape the brands’ images. The Washington Redskins announced that they would no longer use the name and logo “Redskins” and the team (for now and maybe permanently) will go by the name the “Washington Football Team.”1

Further, in June 2020, a country band that had gone by the name “Lady Antebellum” since it was formed in 2006 officially changed its name to “Lady A.” The band issued a public statement, noting that they named the band after the southern “antebellum” style home where they took their first photos together, but they “did not take into account the associations that weigh down this word referring to the period of history before The Civil War, which includes slavery.” The band pledged to drop the word “antebellum” and “move forward as Lady A, the nickname [their] fans gave [them] almost from the start.”

Following this announcement, the band was criticized by blues singer Anita White, who claims she has recorded music and performed under the name Lady A for decades. The parties attempted to work out a way where they could both use the name, with the band offering Ms. White money for legal fees and a promise to help her with her career if she gave them rights to use the name Lady A. Ms. White did not agree to these terms and requested a $10 million payment to allow the band to continue to use the mark. The band did not accept and filed suit in Tennessee federal court, seeking declaratory judgment that the band’s trademarks incorporating “Lady A” do not infringe any of Ms. White’s rights in “Lady A.” The band claims it has been using “Lady A” interchangeably with “Lady Antebellum” since 2006. The band attached evidence to its complaint that it registered the trademark “Lady A” for musical records and for entertainment services in 2010 and 2011. Ms. White did not oppose or contest the registrations, which are now incontestable. See Section 15 of the Trademark Act, 15 U.S.C. § 1065. The band also notes that Ms. White never applied to register “Lady A” as a trademark. The band specifies in its complaint that it does not wish to prohibit Ms. White from performing as “Lady A” nor does it seek damages; instead, it wishes to peacefully coexist with her.

Ms. White countersued in Washington federal court, alleging that the band “usurped” her brand and caused her to lose business and status. She brings causes of action for trademark infringement and unfair competition, claiming that she has used the stage name and trademark “Lady A” for nearly thirty years and has thus accrued common law rights in the trademark. She seeks an injunction and damages.

Both cases are still ongoing and nothing on the merits has been decided. There seems to be no dispute that the band has been using the name “Lady A” for at least a decade; they submitted proof of online articles, clothing, and other evidence that they can be associated by the name as well as by the name “Lady Antebellum.” The band also registered the mark, while Ms. White did not. The band notes the incontestability status of their marks, but this is likely not something that will help them in this case. Incontestability relates to the validity of a mark, not the strength of the mark. The mark’s registration as incontestable is not relevant to the issue of whether the mark is sufficient to trigger confusion. An incontestable mark is also subject to the challenge that another party used the mark in commerce first—before the incontestable mark’s registration. This is what Ms. White is claiming, that she used the mark in commerce first through performances and music sales. Ms. White claims she released albums as “Lady A” since 2006 and has been performing using the name since at least the early 1990s.

The band also claims that Ms. White has never used “Lady ‘A’” as a trademark to identify her goods or as a service mark to identify her entertainment services, and, if she did use it as a trademark, it was after the band established their rights in the mark. Ms. White disagrees, stating she has used the name for decades.

Ms. White will need to prove the territory in which she has continued to use the mark without significant interruption since prior to the band’s use in that territory. The band is nationally, if not internationally, known, but, as of now, it appears that Ms. White’s territory of use is not so clear or established. If Ms. White can establish her territory of use (along with a zone of natural expansion), she will likely have rights superior to the band in that territory. If Ms. White’s use has been restricted to only one small area, such as Seattle, the band may be granted nationwide use of the mark, subject only to an exception in that area. Even the band’s incontestable registration would not grant it the exclusive right to use the mark where Ms. White has continued to use the mark and has established rights since prior to the band’s registration. It is unclear how such a division and exception could be made for the band who performs and sells music nationwide.

As of now, the only pending questions before both district courts in the parties’ cases relate to venue and the first to file rule. But eventually, the dueling trademark rights will be analyzed and this will be an interesting case for trademark lawyers to continue to follow.

About the author: Hannah Brown is an associate and member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group, specializing in trademark, copyright, and patent litigation. She is a former law clerk to the Hon. Janis Sammartino and Hon. Cynthia Bashant of the U.S. District Court, Southern District of California.
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1 As an interesting intellectual property-related side note, this is not the first time the Redskins have been criticized for their name. In 1992, several Native Americans filed a joint petition with the Trademark Trial and Appeal Board (TTAB) of the U.S Patent and Trademark office requesting the cancellation of the term “Redskins.” The petition claimed the term is “disparaging” to American Indians. The TTAB judges canceled the federal registration of the mark Redskins “on the grounds that the subject marks may disparage Native Americans and may bring them into contempt or disrepute.” The case underwent several rounds of appeals. Eventually, the Fourth Circuit Court of Appeals reinstated the trademark. See Pro-Football, Inc. v. Blackhorse et al., Case No. 15-1874 (4th Cir. 2015). The decision was based on a Supreme Court decision issued in June 2017 in an unrelated case involving a rock band, the Slants. The Supreme Court declared that a section of federal law banning trademarks that may disparage people was a violation of the First Amendment. It was this section of the Lanham Act that the Native Americans relied upon to argue that the Redskins’ trademarks should be cancelled. The Fourth Circuit therefore issued a decision consistent with the Supreme Court ruling that the disparaging trademark ban is unconstitutional.
Although technically a loss for the plaintiffs, the lawsuit alerted the nation to the Native Americans’ contentions and feelings regarding the team’s name. Now, their request has been granted and the “Redskins” are no more.

Are Commercial Parody Dog Toys Subject to the Heightened Rogers Test, and Do They Qualify As Non-Commercial Works under the Trademark Dilution Revision Act? Jack Daniels and Amici Ask the U.S. Supreme Court to Overturn the Ninth Circuit

Author: Benni Amato

The dog toy industry has drawn the ire of many famous brands; one of the latest examples is VIP Products’s “Bad Spaniels Silly Squeaker” dog toy, fashioned to resemble Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey. The toy replaced “Jack Daniel’s” with “Bad Spaniels,” along with a drawing of a guilty-looking spaniel. Instead of “Old No. 7 Tennessee Sour Mash Whiskey,” the toy read, “Old No. 2 on your Tennessee Carpet.” Instead of “40% ALC BY VOL (80 PROOF),” the toy read, “43% POO BY VOL” and “100% SMELLY.”

Jak Daniel’s emerged victorious before the United States District Court, District of Arizona on summary judgment and after a bench trial on its trademark infringement and trademark dilution claims. However, while the Ninth Circuit Court of Appeals affirmed the validity of Jack Daniel’s trade dress, it vacated and remanded the judgment on the infringement claim, and reversed the judgment on the dilution claim.

The Infringement Claim

The Ninth Circuit noted that while trademark and trade dress infringement cases turn on likelihood of confusion, if the otherwise infringing goods involve “artistic expression,” a plaintiff must also show either that the defendant’s use of the mark is either “not artistically relevant to the underlying work,” or “explicitly misleads consumers as to the source of content of the work”—otherwise known as the Rogers test, named after Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002).

Whether a work is expressive depends on whether the work “communicat[es] ideas” or “express[es] points of view.” The work need not be considered high art, nor do the work’s availability commercially vitiate any expressive qualities. The Ninth Circuit concluded that the Bad Spaniels toy was an expressive work that conveyed humor, and it thus vacated judgment and remanded the claim to the district court to consider the Rogers test.

Jack Daniels now seeks certiorari from the United States Supreme Court, arguing that the Rogers test should be limited to the use of trademarks in the titles or contents of expressive or artistic works, not a commercial dog chew toy.

The Dilution Claim

The Ninth Circuit noted that a non-commercial use of a mark is not subject to trademark dilution claims. Then, without any in-depth discussion, the Ninth Circuit concluded that because the Bad Spaniels product was protected by the First Amendment, VIP was entitled to judgment on the dilution claims in its favor.

Jack Daniels also seeks certiorari from the Supreme Court on this issue, arguing that a commercial product’s use of humor should not render the product “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), and thus barring a dilution by tarnishment claim.

Previously, in the Mattel case, the Ninth Circuit held that as long as a work was not purely commercial (for example, the song “Barbie Girl”), then the First Amendment defense can apply to dilution claims. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 907 (9th Cir. 2002). However, due to the lack of analysis in the Jack Daniels opinion, it is not clear how the Ninth Circuit found the Bad Spaniels squeaker toy as not purely commercial.

Jack Daniel’s and its amici—including Campbell Soup Company, Campari America, Alcohol Beverage Industry Associations, Constellation Brands, and International Trademark Association—expressed concern in their briefing that a defendant selling a commercial product may escape any liability under the dilution laws by simply making the product humorous.

Chewy Vuitton

One of the more famous dog toy cases is Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007), which involved a “Chewy Vuitton” dog toy. In fact, the Ninth Circuit cited to this Fourth Circuit case in supporting its own Jack Daniels opinion. However, in the Louis Vuitton case, while the dog toy’s parodic nature dominated much of the opinion, the Fourth Circuit found no likelihood of confusion in part because the products were different, and there was minimal overlap between advertising and sales channels. The Jack Daniels district court found the opposite, that likelihood of confusion existed, in part because Jack Daniels licensed its intellectual property for certain dog products.

As to the dilution by tarnishment claim in Louis Vuitton, the Fourth Circuit ruled that Louis Vuitton failed to satisfy its burden that the dog toy would harm its reputation. While reaching a similar result, the Ninth Circuit instead cited to the First Amendment and non-commerciality as its reason for reversing judgment on the dilution by tarnishment claim.

In other words, while both the Fourth Circuit and Ninth Circuit ruled in favor of the dog toy producers, the appellate courts relied on different analyses.

Case Status and Opinions

The Supreme Court has yet to grant certiorari to review the case. VIP Products and its amici—Trademark Law professors, including Rebecca Tushnet of Harvard Law School—filed their briefs on December 16, 2020, and Jack Daniels filed its reply brief on December 23, 2020.

While consumers may or may not confuse a famous whiskey brand with a potty-humored dog toy, and the dog toy may or may not tarnish the whiskey brand’s reputation, it appears that the main objections from the Jack Daniels amici and commentators stem from the Ninth Circuit’s reasoning, or lack thereof. The Ninth Circuit’s opinion could lead to an expansion of what constitutes “expressive” and/or “non-commercial” works, unless the Supreme Court decides to take on the issue and rule otherwise.

About the author: Benni Amato is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving trademarks, copyright, trade secrets, patents, internet issues, cybersecurity, and contractual disputes, as well as domain name arbitrations and trademark and copyright prosecution and licensing. Ms. Amato’s biography can be found here.