A Finding of Willfulness Is Not Required for an Award of Profits in a Trademark Infringement Case

The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By a unanimous vote, the Supreme Court said NO.

In Romag Fasteners, Inc. v. Fossil Group, Inc., Romag, a manufacturer of magnetic snap fasteners for use in leather goods, brought suit against Fossil, alleging that Fossil was infringing Romag’s trademark by using counterfeit Romag fasteners on some of Fossil’s products. After a jury trial in which the jury agreed that Fossil had acted “in callous disregard” of Romag’s rights but had not acted “willfully,” the district court refused Romag’s request for Fossil’s profits. In doing so, the district court was relying on the then Second Circuit precedent that required a plaintiff seeking a profits award to prove the defendant’s violation was willful. Because not all circuits agreed with the Second Circuit’s precedent, the Supreme Court took the case to resolve the dispute. Continue Reading

Takedown Tips for Brands Battling Unauthorized Distribution During the COVID-19 Pandemic

The hair salons are closed – now what? During this COVID-19 pandemic, many consumers are resorting to buying hair care products online, including products such as permanent hair colorants that are designed solely for use by licensed cosmetologists.

Brands should monitor e-commerce sites for the unauthorized distribution of their salon-only products that are being dumped online. Instructions and warnings are written for trained professionals, not ordinary consumers. The concern is these products are not for the ordinary consumer to use at home without professional help, and improper use can result in serious harm or injury. Continue Reading

3M Joins the Fight Against Rampant Price Gouging

Private enterprise has joined state and local governments in the fight against rampant price gouging during the COVID-19 pandemic. In response to the pandemic, state and local governments across the country have declared states of emergencies, triggering laws prohibiting price gouging. Consumers are not the only targets of price gouging; state and local government procurement offices also are receiving offers for products at exorbitant prices. The outrage over perceived price gouging is often misdirected at the manufacturers and brands behind the products involved. These manufacturers and brands are joining governments’ fights against price gougers.

Last month, medical product manufacturer 3M filed four lawsuits against alleged price gougers in four states: New York, California, Texas, and Florida. The New York defendant’s conduct was pretty egregious.  In New York, the City Office of Citywide Procurement (the NYC Procurement Office) was offered millions of highly demanded N95 respirator masks made by medical product manufacturer 3M at prices 500%-600% higher than 3M’s list prices. Last week, 3M took the matter into its own hands and filed an action in the Southern District of New York against the company that made the offer, alleging that it used 3M trademarks to dupe the NYC Procurement Office into believing the seller was affiliated with 3M. Continue Reading

All’s Fair in Love and War . . . So What About Fair Use in the Time of Coronavirus?

In response to the COVID-19 pandemic, schools, colleges, universities, libraries and other institutions have closed and migrated their in-person classes and other offerings to an online model. But with the rapid migration of physical content to online platforms, questions have arisen regarding the application of copyright law to books and other texts that now are being shared and distributed online.  Do the exigent circumstances of the COVID-19 pandemic affect online sharing of content, especially in the educational context? And what analysis should an institution perform to determine whether its online model could create any copyright-related heartburn?

To answer these questions, we review of two common forms of protection for content distributors along with some hypothetical situations that may arise for content distributions operating during the COVID-19 pandemic

Protection for content distributors. The two most relevant forms of protection for content distributors are the Technology, Education and Copyright Harmonization (TEACH) Act (17 U.S.C. § 110(2)(A)-(D)) and the doctrine of fair use (17 U.S.C. § 107). Each of these is described below. Continue Reading

A Snap Shot on Inadvertent Licensing Through Social Media

On April 13, 2020, Judge Kimba Wood, of the U.S. District Court for the Southern District of New York, clarified what we knew to be true: Makers and creators should read social media sites’ Terms of Use and other posted conditions before publicly displaying works on those platforms. In her opinion and order in Sinclair v. Ziff Davis, LLC 18-cv-790 (SDNY), Judge Wood dismissed an infringement suit a photographer brought against a third-party news site that embedded a link to the photographer’s public Instagram page.

Photojournalist Stephanie Sinclair is well known for her photographs documenting human rights violations against women. She posted cropped versions of certain of her works to her public Instagram site in 2015. At some point in 2016, online news publication Mashable, in the course of writing an article on women photojournalists, approached Sinclair for a license to display one of her images alongside a reference to Sinclair’s work. Perhaps Mashable’s mistake was what could be assumed to be a fairly tone-deaf offer of $50 to this Pulitzer Prize-winning photographer for the use of the photograph as part of the article. Possibly insulted, Sinclair refused to grant a license to display her work. Mashable’s solution was to publish the article, and while it had photographs for most of the artists referenced, for Sinclair and another photographer, the publication embedded an image from her public Instagram page.  Whether an embed constitutes an infringement of the author’s display under Section 106 of the Copyright Act is an open issue since the work itself does not reside on the purported infringer’s server or site. Sinclair nonetheless sued. Continue Reading

Are Federal Reserve Banks People Too? Federal Circuit Clarifies ‘Persons’ Capable of Petitioning for Post-Grant Patent Review Under the America Invents Act

The Federal Reserve has been at the forefront of daily news in connection with its efforts to revive the national economy in the wake of the COVID-19 pandemic. At the same time, the U.S. Court of Appeals for the Federal Circuit in Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al. recently ruled that Federal Reserve banks are now permitted to file administrative patent challenges with the Patent Trial and Appeal Board (PTAB). In its April 10 decision, the Federal Circuit Panel distinguished the features and organizational structure of the Federal Reserve banks from traditional “government entities” that were previously barred from initiating such patent challenges. Continue Reading

Color Me Protectable: A Color Mark on Packaging May Be Inherently Distinctive

On April 8, 2020, the U.S. Court of Appeals for the Federal Circuit issued a precedent-setting opinion adding further clarity to the evolving body of law on a vexing question: Under what circumstances can a producer obtain U.S. trademark registration for a mark consisting solely of color?

The specific issue presented in the matter of In Re: Forney Industries, Inc., Case 19-1073, was whether a particular color pattern displayed on product packaging for welding and machining accessories and tools (shown below) can be deemed to be “inherently distinctive” and thus eligible for registration without any required showing of “acquired distinctiveness” (aka “secondary meaning”).

The Trademark Trial and Appeal Board (the Board) had answered “no.” The Federal Circuit found this decision unsupported by the controlling U.S. Supreme Court precedents that have spoken on the matter in related (but not identical) contexts. The Board decision was vacated and remanded for further proceedings. Continue Reading

Federal Circuit’s COVID-19 Response Brings Public Telephonic Oral Arguments and Patent Cases Decided on the Briefs

The Federal Circuit’s April court week, held amid the COVID-19 pandemic, was like no other in the court’s history. Instead of hearing 12 oral arguments per day in its three courtrooms, the Circuit held a handful of telephonic oral arguments and decided the great majority of this month’s cases on the briefs. As a side effect, this also marks the first time that the public could hear live Federal Circuit arguments remotely. These new practices not only will change your expectations and planning for oral argument, but also could foreshadow more permanent changes in how the Circuit handles appeals.

The Circuit’s total caseload for April was typical – 66 appeals spread out across 15 panels. A fairly standard panel includes four argued cases and one to be decided on the briefs. The cases on the briefs tend to be veterans or employment appeals, often where the appellant is pro se. In contrast, virtually every patent case, regardless of origin, receives an oral argument. If April had been a normal month, there would probably have been around 50-55 argued cases and another 10-15 decided on the briefs. Instead, there were only 19 argued cases, with the remaining 47 decided on the briefs. And all of those 19 argued cases were heard telephonically. Continue Reading

Considerations for 3D Printing of Medical Devices, Accessories, Components and Parts During the COVID-19 Pandemic

The medical device industry and the Food and Drug Administration (FDA) have been experimenting with three-dimensional (3D) printing for years. Shortages of medical devices such as personal protective equipment (PPE) and ventilators abound, making 3D printing particularly interesting with regard to fighting COVID-19. The FDA even issued some guidance on 3D printing of medical devices, accessories, components and parts during the COVID-19 pandemic. But potential exposure to patent infringement liability remains a risk.

FDA Guidance Addressing 3D Printing

The FDA began addressing the 3D printing of medical devices years ago. For example, in October 2014, the FDA held a public workshop, “Additive Manufacturing of Medical Devices: An Interactive Discussion on the Technical Considerations of 3D Printing.” Then, in December 2017, the FDA issued “Technical Considerations for Additive Manufactured Medical Devices Guidance for Industry,” which addressed the 3D printing of medical devices. According to the FDA, “Additive manufacturing is a process that builds an object by sequentially building 2-dimensional layers and joining each to the layer below, allowing device manufacturers to rapidly produce alternative designs without the need for retooling and to create complex devices built as a single piece.” Additive manufacturing is the process of 3D printing. In the guidance, the FDA discusses design and manufacturing process considerations, device testing considerations, and labeling for the emerging technology of 3D printing medical devices. Continue Reading

7th Circuit Upholds Trademark ‘Fair Use’ Doctrine

In an August 2019 decision, the 7th U.S. Circuit Court of Appeals upheld the earlier finding by the Northern District of Illinois of summary judgment that PepsiCo’s Gatorade division’s use of the phrase “Gatorade The Sports Fuel Company” on its Gatorade family of products did not infringe SportFuel Inc.’s SPORTFUEL trademark because the use of the “Sports Fuel” term by Gatorade was descriptive, not used in a source-indicative manner and thus a “fair use” of that term. Continue Reading