Website Advertisements and Copyright Fair Use

For attorneys frequently engaged in copyright infringement litigation, drilling down into the specifics of the four fair use defense factors set forth in 17 U.S.C. § 107 is common practice. While the details of any particular case will imbue certain factors with more importance than others, more often than not, copyright plaintiffs are quick to note (and criticize) when defendants are for-profit entities and when the contested material is posted on a website that contains advertising – e.g., online news sites and social media. Indeed, part of 17 U.S.C. § 107(1) asks whether the contested use “is of a commercial nature.” But the existence of commercialism and website advertisements is not, and should not be, a death knell for a successful fair use defense. Continue Reading

Federal Circuit Disregards ‘Manipulative Activities’ of Plaintiffs in Deciding Venue Transfer

The U.S. Court of Appeals for the Federal Circuit recently issued a precedential opinion discussing plaintiffs’ attempts to influence venue through reliance on a licensing agreement that purported to limit where a patent infringement suit “might have been brought.” See In re Samsung Electronics Co., Case Nos. 2021-139, 2021-140 (Fed. Cir. June 30, 2021). In its opinion, a panel of the Federal Circuit criticized the plaintiffs’ use of a licensing agreement that transferred the right to sue for infringement in certain counties in Texas, including certain counties in the Western District of Texas, to plaintiff Ikorongo Texas, with plaintiff Ikorongo Tech retaining the right to sue for infringement in the rest of the country. Continue Reading

Appellate Hot Potato: Which Circuit Court Will Hear a ‘Walker Process’ Appeal?

In the latest round of appellate hot potato, the U.S. Court of Appeals for the Federal Circuit transferred to the U.S. Court of Appeals for the Fifth Circuit an appeal from a decision by the U.S. District Court for the Northern District of Texas regarding antitrust claims associated with enforcement of a patent found unenforceable due to inequitable conduct. See Chandler v. Phoenix Servs. LLC (Fed. Cir. 2021). The Chandler court, in finding that the Federal Circuit lacked jurisdiction over the antitrust claims (also known as Walker Process claims), explained that its jurisdiction was limited in relevant part to an appeal of a “civil action arising under … any Act of Congress relating to patents.” And although “Walker Process antitrust claims may relate to patents in the colloquial use of the term,” the “cause of action arises under the Sherman Act rather than under patent law[.]” After finding that it lacked jurisdiction, the Federal Circuit transferred the appeal to the Fifth Circuit. Continue Reading

A Brief Overview of the USPTO’s Interim Procedures Implementing Arthrex

On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that “the unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary to an inferior office.” To ensure that APJs function as inferior officers, the Supreme Court issued a tailored remedy – the Director of the United States Patent and Trademark Office (USPTO) has the unilateral authority to review Patent Trial and Appeal Board (PTAB) decisions. Continue Reading

Tips for Benefitting from a U.S. Trademark Examiner’s Amendment

Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners, even though the window of opportunity is usually quite short. Notably, prosecution will proceed much more quickly if applicants can take advantage of working with the examiners to effect amendments that are often simple or require minimum substantive review.

The U.S. Patent & Trademark Office (USPTO) has a Trademark Manual of Examining Procedure and Section 707 provides guidance on an examiner’s amendment:

  • “The amendment must be specifically authorized by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner.”
  • “An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application” (emphasis added).

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A Pattern of Deceit? SCOTUS to Consider Whether Section 411(b) of the Copyright Act Imposes a Mental State Requirement Akin to Fraud

On June 1, 2021, the Supreme Court granted certiorari on the question of whether Section 411(b) of the Copyright Act is intended to be a “fraud” statute that requires scienter for cancellation of a copyright registration. See Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 20-915.

In 2008, Congress amended the Copyright Act to acknowledge the validity of copyright registrations that were based on applications with ministerial, nonmaterial errors. See 17 U.S.C. Section 411(a). However, this “safe harbor” is tempered by Section 411(b), which leaves vulnerable to cancellation registrations that contain errors that would have been material to the Copyright Office’s decision to grant registration if the inaccuracy was known to the applicant. The statute also directs a court to request that the Register of Copyrights advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration. Continue Reading

USPTO Implementing Trademark Modernization Act

Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rule-making[1] to implement provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020.[2] The public has until July 19, 2021, to comment on the proposed rule-making before implementation. The proposed rules create new nonuse cancellation procedures, shorten office action response deadlines and expand on the USPTO’s Letter of Protest procedures, among other changes. These and other rule changes are summarized below. We encourage all practitioners to review the notice in detail and provide comments.

  1. Ex Parte Expungement and Reexamination Proceedings: To address problems of fraudulent filings and continued registration of marks not properly in use in commerce, the USPTO proposes rules implementing the new ex parte expungement and reexamination proceedings created by the TMA. These proceedings can be initiated by third parties or the USPTO Director to challenge whether a registrant has made use of its mark in commerce. The details of the proposed procedures for these proceedings can be found in the notice.
  2. Estoppel and Co-Pending Proceedings: The USPTO proposes rules on estoppel and barring co-pending proceedings involving the same registration and goods and/or services for the new expungement and reexamination proceedings. Following the termination, expungement or reexamination proceedings cannot be brought again for the same goods and/or services at issue in the original proceedings.
  3. Attorney Recognition: The USPTO proposes ending the automatic termination of an attorney’s representation when an application registers, ownership changes or an application is abandoned. Under the proposed rule, the USPTO would continue to recognize the applicant’s or registrant’s attorney as its representative until the owner revokes the appointment or the attorney withdraws the representation. Representation will continue even after an application is abandoned or a registration is canceled.
  4. Flexible Response Periods: Office action response deadlines are currently set at six months. The TMA provides for flexibility in setting office action response deadlines from 60 days to six months with options for extensions of up to a full six months. The USPTO proposes amending office action response periods to three months for applications under sections 1 and 44. Applicants can request a single three-month extension upon payment of a $125 fee for electronically filed extension requests. But for Section 66(a) applications, the office action response deadline shall remain at six months from issuance of the office action. The USPTO is considering two alternatives to this proposal and is seeking comments on all three options.
  5. New Nonuse Ground for Cancellation Before the Trademark Trial and Appeal Board (TTAB): The USPTO proposes a rule amendment implementing the new ground for cancellation based on nonuse created by the TMA. Third parties can now seek cancellation of a registration for nonuse of a mark that has never been used in commerce. This ground for cancellation is available at any time after the first three years following registration.
  6. Letters of Protest: The TMA provided that the USPTO Director’s determinations on Letters of Protest are final and non-reviewable. Such determinations will also not prejudice any party’s rights in any other proceeding. The USPTO proposes rule revisions to add these provisions. These revised rules build on the letter of protest procedures published as a final rule in November 2020.
  7. Suspension of Proceedings: The USPTO proposes expanding suspension rules for applications and TTAB proceedings to include suspension for ex parte reexamination or expungement proceedings where applicable.
  8. Court Orders Concerning Registrations: The USPTO proposes codifying its procedures to require submission of certified copies of court orders canceling or affecting trademark registrations. The USPTO will not act on such court orders until the case from which the order issues is finally determined.

[1] A copy of the notice can be found here: https://www.federalregister.gov/documents/2021/05/18/2021-10116/changes-to-implement-provisions-of-the-trademark-modernization-act-of-2020.
[2] https://www.ipintelligencereport.com/2020/12/23/congress-passes-the-trademark-modernization-act/.

Good Faith De Minimis Use of a Mark May Defeat a Claim of Trademark Abandonment in the Fifth Circuit

In Perry v. H.J. Heinz Company, et al. (No. 20-30418 5th Cir. April 12, 2021), the U.S. Court of Appeals for the Fifth Circuit dealt with the issue of whether de minimis use can defeat a claim of trademark abandonment. It can, provided that such use is not made in good faith and not simply to maintain a trademark.

In Perry, the plaintiff produced 60 bottles of his mayonnaise/ketchup and mustard/ketchup concoctions branded METCHUP.  He sold bottles from the lobby of his nine-room hotel in Lacombe, Louisiana (which, according to the U.S. Census Bureau, had a population of 8,679 in 2010).  The plaintiff had sales records for 34 bottles.  Sales totaled $170 for a profit of $50.  The plaintiff testified he hoped to sell more bottles and had obtained a federal registration for the mark, which at the time of the suit was incontestable.

Heinz desired to sell a blend of mayonnaise and ketchup.  Before doing so, it held a national promotion online for the naming of its product.  One fan proposed METCHUP, and Heinz posted a mockup of a bottle branded so on its website.  The name MAYOCHUP was eventually selected, however, after Heinz searched the mark and could not locate its use anywhere. Continue Reading

Bio-Rad Co-ownership Defense Fails at the CAFC

On April 29, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed an International Trade Commission (ITC) decision holding the importation and sale by Bio-Rad Laboratories, Inc. (Bio-Rad) of certain microfluidic systems and components used for gene sequencing or related analyses infringed certain 10X Genomics Inc. (10X) patent claims and, moreover, that 10X practiced the patent claims satisfying the requirement of a domestic industry.

In particular, the CAFC decision included an analysis of the ITC determinations regarding both infringement and the domestic industry requirement by Bio-Rad and 10X. However, we will focus on an argument advanced by Bio-Rad regarding a co-ownership defense. Continue Reading

Supreme Court to Decide Fate of Assignor Estoppel

In Hologic, Inc. v. Minerva Surgical, Inc. (Fed. Cir. April 22, 2020), the Federal Circuit declined the “invitation to ‘abandon the doctrine’ of assignor estoppel” and, after concluding that the district court did not abuse its discretion in applying the doctrine, affirmed the district court’s grant of summary judgment of no invalidity.  Opinion at 16, 18.

The relevant facts are as follows. Csaba Truckai assigned his interest in the application to which the patent-in-suit claims priority (as well as all continuation applications) to NovaCept, Inc., a company that he co-founded. NovaCept was acquired by, and the patent rights were subsequently assigned to, Cytyc Corporation. Cytyc was later acquired by Hologic. Mr. Truckai eventually left NovaCept and founded Minerva, the accused infringer in this case. After Mr. Truckai’s departure from NovaCept, a continuation of the application Mr. Truckai had assigned to NovaCept was filed. The continuation application issued as the patent that is currently asserted by Hologic against Minerva. Minerva argued that Hologic broadened the claims after Mr. Truckai assigned the application and that the asserted claim is invalid for lack of enablement and failure to provide adequate written description. Continue Reading

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