In a brief, well-reasoned opinion, a unanimous eight-member Supreme Court held that 28 U.S.C. § 1400(b) is a stand-alone provision governing venue in patent infringement suits, unaffected by the broad definition of “residence” in the general venue statute, 28 U.S.C. § 1391.Rather, a domestic corporation “resides” in only its state of incorporation. TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341 (U.S. May 22, 2017).
The Court based its decision on the history of the general venue statute and the patent venue statute and its own consistent interpretation of the patent venue statute. Reviewing that history, the Court observed that Congress created the patent venue statute as the exclusive provision for patent infringement suits, at least against domestic corporations, with little change from its initial creation as an exception to the more frequently amended general venue statute.
Thus, in 1789, Congress in all cases permitted suit in a district if the defendant was “an inhabitant” of the district or could be “found” there. Slip op. at 3 (citing Act of Sept. 24, 1789, § 11, 1 Stat. 79). Congress amended that statute in 1887 to restrict venue to a district where the defendant was an inhabitant or, in diversity cases, where either party was an inhabitant. Slip op. at 3-4 (citing Act of Mar. 3, 1887, § 1, 24 Stat. 552). But a Supreme Court decision in 1893 created confusion about whether the 1887 Act, rather than the 1789 Act, applied to patent cases. Congress enacted the first patent venue statute in 1897 to eliminate the confusion. Slip op. at 4 (citing Act of Mar. 3, 1897, ch. 395, 29 Stat. 695). Continue Reading
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In Viacom International Inc. v. IJR Capital Investments, LLC, 2017 WL 1037294 (S.D. Tex. Mar. 17, 2017), Viacom successfully asserted common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant, which appears in the cartoon SpongeBob SquarePants. The defendant, IJR, had filed an intent-to-use trademark application for the mark THE KRUSTY KRAB for restaurant services. After a Notice of Allowance had been issued, Viacom sent a cease-and-desist letter asserting that registration of the mark would cause a likelihood of confusion with the “iconic” fictional restaurant that had been featured in 166 out of 203 SpongeBob episodes over its seventeen-year run. IJR declined to withdraw its plan to use the mark for a restaurant. Viacom filed suit, alleging trademark infringement, unfair competition and dilution, and ultimately moved for summary judgment.
Although seldom seen in applications or registrations, a scent that identifies the source of a good or service may be eligible for protection as a trademark. Registration of a scent mark carries many of the same requirements that apply to a word mark or a design mark. The scent must be used in commerce.[i] Also, the scent cannot be functional.[ii] For at least this reason, the scent of a perfume, a candle or a food is likely ineligible for registration. One may also imagine an application for the scent of a restaurant being rejected if it is found to serve to entice potential customers. The scent of cleaning fluid may represent a grey area, as the fresh scent is not central to the function of the product, but serves an ancillary purpose in eliminating odors.
On April 5, 2017, the High Court of Justice in the UK ruled that if a patent holder claims that a patent is essential under the ETSI IPR Policy, it must license that patent to third parties on fair, reasonable, and non-discriminatory (FRAND) terms, and the licensee must accept the FRAND terms or face the threat of an injunction barring product sales for items taking advantage of such technology. [2017] EWHC 711 (Pat).
