IP Intelligence

IP Intelligence

Insight on Intellectual Property

Trademark Trends: Back-to-Back Arguments in Trademark Cases at SCOTUS

The Supreme Court heard oral argument in trademark cases on consecutive days this month. On December 2, 2014, the issue of whether a finding by the Trademark Trial and Appeal Board (TTAB) of likelihood of confusion precludes the issue from being re-litigated in a trademark infringement action was presented in B&B Hardware, Inc. v. Hargis Industries, Inc. The following day, the Justices turned to the issue of whether trademark tacking is a question of law or fact in Hana Financial, Inc. v. Hana Bank.

B&B Hardware is the culmination of a sixteen-year dispute between B&B’s SEALTIGHT mark for leak-proof screws and bolts, and Hargis’s SEALTITE mark for construction screws. The TTAB found a likelihood of confusion between Hargis’s SEALTITE and B&B’s senior SEALTIGHT mark, and denied Hargis’s application to register SEALTITE on that basis. In a later trademark infringement litigation, Hargis won a jury verdict of noninfringement, and B&B appealed on the basis that the TTAB’s finding of likelihood of confusion should have been issue-preclusive. The Eighth Circuit affirmed that the district court did not err in declining to defer to the TTAB determination and excluding the TTAB opinion from trial.

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USPTO Issues “2014 Interim Guidance on Patent Subject Matter Eligibility”

On December 15, 2014, the USPTO published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). The new Interim Guidance follows the previous preliminary examination instructions issued on June 25, 2014, in view of CLS v. Alice (2014), and was published as a notice for comments and may therefore be updated depending on public feedback.[1] The new Interim Guidance combines the earlier guidance for claims reciting abstract ideas with the March 4, 2014, guidance for claims reciting natural phenomena and laws of nature.[2]

Under the new Interim Guidance, examiners are instructed to first determine whether the claim is directed to one of the four statutory categories of 35 USC §101 (i.e., process, machine, manufacture, or composition of matter). If so, the examiner is instructed to apply a two-part patent-eligibility analysis, as articulated by the Supreme Court in Alice. In sum, examiners are instructed to apply the two-part analysis to the broadest reasonable interpretation of the claims when analyzed as a whole. A flowchart titled “Subject Matter Eligibility Test for Products and Processes” is provided for examiners, and a copy is set forth below. Continue Reading

Don’t Miss the Window for Post-Grant Review: Monitor Your Competitors by Creating Alert Systems

The U.S. Patent and Trademark Office has new and popular procedures for challenging the validity of (in other words, killing) a competitor’s patent. The most powerful procedure, a Post-Grant Review (PGR), must be filed within nine months of the grant or “issue date” of any patent with a priority date of March 16, 2013, or later. This requires businesses to monitor their competitors’ patents and patent applications so that they avoid missing the nine-month window.

PGRs provide unique advantages that are not available in litigation or other post-grant proceedings. For example, the PGR process allows parties to challenge the patent on almost any ground that is a condition for patentability, including novelty, nonobviousness, definiteness, adequate written description, enablement and patentable subject matter; such a range of grounds is not available in any other single review proceeding. Further, the PGR process is advantageous because in it a patent has no presumption of validity as it would in a federal district court action. And the conventional wisdom is that the patent office board hearing post-grant challenges has been more favorable to the challengers. A PGR proceeding also usually costs much less than district court litigation and can result in a final decision on a much faster time line. Finally, the PGR process can force patentees to amend their claims in a way that opens up the door for challengers to acquire intervening rights, which can help drastically limit future infringement claims and damages. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part V

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2: Early Native Advertising and the Current FTC Regulatory Landscape

Part 3: Evolution of the Commercial Speech Doctrine

Part 4: Distinguishing Commercial versus Non-Commercial Speech

Part 5 applies the commercial speech doctrine to native advertising and asks whether certain forms of native may be protected by the First Amendment.

—PART V—

Not all Native Advertising May Be Commercial Speech under the First Amendment

If there is one thing clear from the case law, it is that the commercial speech analysis under the First Amendment is a fact intensive one that does not clearly lend itself to bright lines, especially when dealing with mixed commercial and noncommercial speech. Native advertising also does not lend itself to a single categorization as it can take a number of forms. See Part I.A., supra. As discussed below, the appropriate level of First Amendment protection for native advertising as commercial or noncommercial speech should turn on the nature of the communication as opposed to a catch-all net. [3]

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Another Step in the Long March from Campbell v. Acuff-Rose toward Fair Use Free-for-All?

Fox News Network, LLC v. TVEyes, Inc., 2014 WL 4444043 (S.D.N.Y. Sept. 9, 2014)

TVEyes is a media-monitoring subscription service that “records the entire content of television and radio broadcasts and creates a searchable database of that content.” This service allows subscribers to search keywords or phrases to determine and review an aggregation of instances of the search term appearing in the media. Subscribers include businesses and governmental agencies such as the White House, United States Army, and local and state police departments; the service is not available to members of the general public. Clips are limited to ten minutes in length, and a majority of the clips are two minutes or less; users are required to agree to use the clips for internal purposes only.

Fox News took issue with TVEyes’ commercialization of its copyrighted broadcasts, and sued for infringement. It contended that TVEyes’ service would have a detrimental effect on the existing market for rebroadcasts of its copyrighted content, which Fox News made available online and also licensed to third parties. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part IV

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2: Early Native Advertising and the Current FTC Regulatory Landscape

Part 3: Evolution of the Commercial Speech Doctrine

Part 4 below examines the important legal distinction between “Commercial Speech” and “Non-Commercial / Inextricably Intertwined Speech” 

—PART IV—

Commercial and Noncommercial Inextricably Intertwined Speech

The Bolger court found that the mailings constituted commercial speech “notwithstanding the fact that [informational pamphlets] contain[ed] discussions of important public issues.”[3] Advertising that “links a product to a current public debate” is not automatically transformed into constitutionally protected noncommercial speech.[4] This is because “a company has the full panoply of protections available to its direct comments on public issues, so there is no reason for providing similar constitutional protection when such statements are made in the context of commercial transactions.”[5] And in that circumstance, “advertisers should not be permitted to immunize false or misleading product information from government regulation simply by including references to public issues.”[6] Continue Reading

Apparel Designs and the “Metaphysics” of Copyright Protection

Varsity Brands, Inc. v. Star Athlectica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014)

Metaphysics is usually thought to be the province of philosophers or theologians.  A recent decision by a U.S. District Court in Tennessee, Varsity Brands, Inc. v. Star Athletica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014), reminds us that copyright law can also require courts to confront some pretty thorny metaphysical issues in distinguishing between copyrightable expression and non-copyrightable utilitarian designs.  As Professor Paul Goldstein has written, “[o]f the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectable pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design.”

Section 101 of the Copyright Act frames the distinction between copyrightable and utilitarian works.  The Copyright Act defines “pictorial, graphic, and sculptural works” to include “two-dimension and three-dimensional works” but makes clear that copyright protection does not extend to “their mechanical or utilitarian aspects,” and further states:

“the design of a useful article . . . shall be considered [protected by copyright] only if, and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”   Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part III

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2: Early Native Advertising and the Current FTC Regulatory Landscape

Part 3 below provides a quick overview of the commercial speech doctrine the protections traditionally afforded to advertisers by the First Amendment

 

—PART III—

Commercial Speech and the First Amendment

One question that curiously has only sporadically come up in the native discussion is the level of First Amendment protection that should be afforded to such speech. From a constitutional and regulatory perspective, the critical question is whether native is considered “commercial” speech under Supreme Court precedent. If native is considered commercial speech, then government regulations are subject to intermediate judicial scrutiny. If native is considered noncommercial, then government regulations are subject to the more heightened strict scrutiny standard.[3] This section provides a primer on the First Amendment and commercial speech before turning to its application to Native Advertising. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part II

Editor’s Note: This blog post was originally published on September 8, 2014, courtesy of iMedia Connection’s Blog. It is repurposed with permission.

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2 below examines the genesis of native advertising and how existing FTC regulations may be applicable to the practice today. 

— PART II —

The Early Days of Native: Advertorials, Infomercials and Hybrid Ads

With all the hype surrounding native, you would think it is a new development. However, native advertising has actually been around in one form or another for over a century.[3] Some have cited so-called “reading notices” in the late 19th century as the genesis of sponsored content.[4] In this pre-FTC era, these reading notices were essentially paid news stories mentioning a brand or company.  These practices were then followed by what some would say was the first golden age of native if you will, the early days of radio. Programs like the Texaco Star Theater,[5] sponsored by the Texaco Oil Company (now Chevron), presented sponsored content as long-form radio dramas. A generation later, with more and more newspapers and magazines relying on ads to generate revenue, the FTC questioned whether restaurant ads in the format of news articles that failed to identify themselves as ads to consumers required disclosure.[6] A generation after that brought the TV infomercials and advertorials that plagued the late night TV landscape of the 80’s and 90’s. Many view native today as simply the next evolution of print and television ad practices often dubbed as “hybrid advertising” by regulators. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part I

Editor’s Note: This blog post was originally published on September 2, 2014, courtesy of iMedia Connection’s Blog. It is repurposed with permission.

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice. After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.” This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1 below provides an overview of the series and introduces the concept and practice of native advertising.

— PART I —

Overview of the Five Part Series

Last December, the Federal Trade Commission held a workshop entitled “Blurred Lines: Advertising or Content” to address the latest and greatest darling of the digital media advertising world – Native Advertising, otherwise known as sponsored content, sponsor generated content, branded content, brand journalism, or some would say, the less flattering infomercial or advertorial. The FTC Workshop capped a year where Native Advertising moved to the forefront of the publishing and advertising industries and the FTC. On its surface, much of the debate at the FTC Workshop and elsewhere centers on deception, namely whether consumers can distinguish between paid ads and editorial content. As FTC Chairwoman Edith Ramirez put it: “while native advertising may bring some benefits to consumers, it has to be done lawfully…by presenting ads that resemble editorial content, an advertiser risks implying, deceptively that information comes from a non-biased source.” This may hold true for certain forms of native advertising but maybe not for all. As the FTC Workshop industry panelists explained, native advertising covers a broad range of material, from in feed ads for products, to editorial content that may not even reference a product or a brand. To a certain extent, the native advertising regulation discussion presumes that all native advertising constitutes commercial speech under the First Amendment. However, whether native is classified as “commercial” is a profound legal determination as commercial speech is traditionally subject to less First Amendment protection and more regulation than other forms of more protected speech. The current debate therefore begs the underlying constitutional question—is all native advertising actually commercial speech?

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