Author Archives: Robert Wagner

Supreme Court Kills Laches Defense to Patent Infringement

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Supreme CourtOn March 21, 2017, the US Supreme Court, in a 7-1 decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Case No. 15-927, held that the equitable defense of laches no longer can be used as a defense to a claim of patent infringement. Justice Alito delivered the majority opinion, with Justice Breyer dissenting.

Laches is an equitable doctrine that bars a patent owner’s claim for damages in a patent infringement lawsuit if the patent owner waits an unreasonable amount of time before bringing suit against the accused infringer and that delay prejudices the accused infringer’s defense. This defense has existed for decades and its contours were defined by the Federal Circuit in its A.C. Aukerman Co. v. R. L. Chaides Construction Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc) decision.

However, with the Supreme Court’s decision in Petralla v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014) decision that held that laches cannot bar a claim for damages for copyright infringement within the 3-year statute of limitations, the Court decided to address whether laches can still be a defense to a claim for damages for patent infringement.

In considering this, the Court looked to the history of laches-type defenses, and concluded that they exist as a judicially-created defense by courts of equity when there were no statutes of limitation.  However, “[w]hen Congress enacts a statute of limitations, it speaks directly to the issue of timeliness and provides a rule for determining whether a claim is timely enough to permit relief.” Therefore, because Congress created a 6-year statute of limitations for patent infringement, courts cannot override that statute of limitations with an equitable laches defense. Accordingly, the Court held that the laches defense is no longer applicable in patent infringement lawsuits.

The dissent and appellee pointed out that the patent statute of limitations is unusual and warrants the continuance of the laches defense. The limitations period for a patent infringement claim does not begin to accrue from the point of infringement or the point at which a patent owner has a “complete and present cause of action.” Rather, the limitations period works backwards from the time of the filing of the lawsuit–it only limits a patent owner’s ability to collect damages to the period 6 years before the filing of the lawsuit. In other words, it does not matter if the patent owner knows of the infringement for a period longer than the limitations period (e.g., 10 years ago), but chooses not to file suit until today. Under the patent statute, the patent owner can still bring suit, but it will only be limited to damages occurring in the prior 6 years. This statute of limitations is unlike virtually every other statute of limitations, which would bar such an untimely claim. The majority rejected this distinction out of hand without a clear explanation.

The dissent also pointed out that the majority’s decision creates a significant disincentive for patent owners (especially ones that do not compete with the accused infringer) to act quickly upon learning of infringement. Without the laches defense, a patent owner can sit back and wait until the time at which the most damages have occurred and then file suit. Previously, such a tactic would have run a significant risk that a court might uphold a laches defense and bar any recovery.

The dissent also argued that the majority’s reliance on Petralla is not warranted because of the significant differences between copyright and patent law. With copyrights, the owner must prove copying, whereas patent infringement is a strict liability offense. Therefore, delay will tend to work to the disadvantage of a copyright owner because the evidence of copying may tend to fade with time. On the other hand, a patent owner does not have to prove copying, so the passage of time tends to work in the patent owner’s favor. For example, evidence of prior art or the state of the art at the time of the patent application may become lost with time, which would make it harder for an accused infringer to successfully argue that the patented invention was obvious or anticipated.

As a practical matter, the laches defense was not often successful for accused infringers, but it created an important check against patent owners and encouraged them to timely bring lawsuits when they believed that their patent rights were infringed. It will be interesting to see how patent owners behave now that this check has been eliminated.

Fed Circuit Reverses Finding of Indefiniteness of “Visually Negligible” Term

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Inventors often use generalized language in patent claims when they are dealing with concepts that are not easy to quantify. This generalized language can create issues in litigation, when a defendant argues that the claims are so imprecise as to be indefinite. The Federal Circuit recently addressed such an issue in Sonic Technologies Co., Ltd. v. Publications International, Ltd. (Case No. 2016-1449). In that decision, the Court, in a unanimous opinion written by Judge Lourie, held that the trial court erred when it concluded that the term “visually negligible” rendered the claim indefinite.

Background

Sonic Technologies owned a patent that described a system and method for using a “graphical indicator” to encode information on the surface of an object that could be read by an “optical device.” Sonic recognized that such a general concept was not new–for example bar code readers have been in existence for decades–but the novel twist was that the “graphical indicator” was essentially imperceptible to the naked eye. The claims required that the “graphical indicator” be “visually negligible.”

16-1449-opinion-1-3-2017-1

Defendants argued that the term “visually negligible” was too subjective and did not provide reasonable guidance on its meaning. Sonix argued that the term was sufficiently definite in light of the specification, which discussed how the “graphical indicator” did not interfere with an observer’s view of item, in contrast with a bar code, which obscures the content below it.

The trial court agreed with defendants and found that the term “visually negligible” was indefinite and the claims were invalid. Sonic appealed to the Federal Circuit, which reversed, finding that the term was sufficiently definite.

indefiniteness standard

Under 35 U.S.C. § 112, ¶ 2, the claims of a patent must particularly point out and distinctly claim the subject matter of the invention. Supreme Court precedent requires that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” (citing Nautilus v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)) Because, absolute precision is not required to meet this standard, courts frequently have allowed more generalized language, especially where the specification provides guidance in interpreting the language.

The Federal Circuit looked at the prior cases and concluded that “visually negligible” was not so uncertain as to render the claims indefinite. It contrasted other cases that dealt with terms that were purely subjective, such as “aesthetically pleasing,” with this one. The specification indicated that an indicator was “visually negligible” when it could not readily be seen by the naked eye and provided examples of such indicators. This specificity was sufficient in the Federal Circuit eyes. Moreover, the Court looked to the extension prosecution history (with multiple reexaminations), which indicated that the Patent Office was able to determine the meaning and scope of the term without issue.

The Court ultimately concluded:

Our holding in this case does not mean that the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty. Neither does the fact that an expert has applied a contested claim term without difficulty render a claim immune from an indefiniteness challenge. As always, whether a claim is indefinite must be judged “in light of the specification and prosecution history” of the patent in which it appears. . . . We simply hold that “visually negligible” is not a purely subjective term and that, on this record, the written description and prosecution history provide sufficient support to inform with reasonable certainty those skilled in the art of the scope of the invention. The examiner’s knowing allowance of claims based on the term that is now questioned, plus the acceptance of the term by both parties’ experts, force us to the conclusion that the term “visually negligible” is not indefinite. Accordingly, we reverse the district court’s conclusion that the asserted claims are invalid as indefinite.

En Banc Federal Circuit Clarifies On Sale Bar Standard

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitIn The Medicines Co. v. Hospira, Inc. (Nos. 2014-1469 and 2014-1504), the Federal Circuit issued an en banc decision clarifying when a product made pursuant to a “product-by-process” claim is on sale for purposes of 35 U.S.C. § 102(b) under the pre-AIA standards. In a decision written by Judge O’Malley, the Court held that to be on-sale, the product must have been the subject of a commercial sale or offer for sale that bears the “general hallmarks” of a sale under § 2-106 of the UCC.

Background

The case involved an Abbreviated New Drug Application in which Hospira sought FDA approval to sell a generic drug before expiration of two of the patents-in-suit, which claim pH-adjusted pharmaceutical batches of a drug product used to prevent blood from clotting. The patents arose out research involving a similar drug not covered by the patents.

In late 2006 MedCo paid a company (Ben Venue) to manufacture three batches of the drug according to the patented process. The three batches were manufactured by the end of 2006 and had a value of over $20 million (even though it cost substantially less to manufacture them). The three batches were placed in quarantine pending FDA approval. The batches were finally released from quarantine in August 2007, which was after the July 27, 2007 critical date.

Hospira claimed that the patents were invalid under § 102(b) for being on-sale prior to the critical date because of the contract between MedCo and Ben Venue to manufacture the three batches. The district court disagreed, finding that the MedCo-Ben Venue sale was a contract for manufacturing services, and not a commercial sale under § 102(b).

The three-judge panel of the Federal Circuit reversed, finding that the contract did trigger the on-sale bar. The entire Federal Circuit then took up the issue en banc to clarify the on-sale bar standard. The en banc Federal Circuit determined that there was no invalidating prior sale for purposes of § 102(b).

Federal Circuit Clarifies On-Sale Bar Standard

Whether the on-sale bar applies is a question of law based on factual findings, so the lower court’s factual findings were reviewed with deference, but the ultimate legal question was reviewed de novo by the Federal Circuit.

The Court traced the history of the on-sale bar and how it was first codified in the Patent Act of 1836, before its final incarnation (for purposes of these patents) in the Patent Act of 1952. Under § 102(b) an inventor is not entitled to a patent if the invention was on sale in the United States more than one year prior to the date of the patent application.

In Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), the Supreme Court clarified the proper analysis of the on-sale bar, and held that courts should employ a two-part test: (1) was the claimed invention the subject of a commercial offer for sale, and (2) was it ready for patenting at that time? Ready for patenting means either it was reduced to practice or there were sufficient drawings or descriptions to allow one or ordinary skill in the art to practice the invention.

The en banc Federal Circuit focused on the first prong of the Pfaff test–was the invention the subject of a commercial offer for sale? The Court determined that it must answer this question by looking what those in the commercial community would understand as being a sale or offer for sale, and that the UCC was a good resource for answering that question.

Under the UCC, “[a] sale is a contract between parties to give and to pass rights of property for consideration which the buyer pays or promises to pay the seller for the thing bought or sold.” Under this standard, the Federal Circuit did not consider MedCo’s contract with Ben Venue to be a commercial sale because (1) only manufacturing services were sold to MedCo, not the invention, (2) the inventor retained title to the invention and Ben Venue was not entitled to sell the product to others, and (3) stockpiling standing alone does not trigger the on-sale bar.

Here, the patents claimed a product by process, not the process itself. So, the contract to manufacturing the drug was not a contract to purchase the product itself. The Court also found meaningful that Ben Venue lacked title to the batches–MedCo always maintained title in them. Without a transfer a title, the Court was disinclined to find that a sale of a product had occurred. In addition, MedCo and Ben Venue had a confidentiality agreement. While not conclusive, this factor also weighed in favor of the Court finding that a sale had not occurred. Finally, the Court did not find that stockpiling a product was sufficient activity to trigger the on-sale bar because that activity fell into the category of actions that amount to preparations for sales.

Conclusion

Taken together, the Federal Circuit found that there was no commercial offer for sale or sale for purposes of § 102(b) under the pre-AIA standard. This decision will provide some additional clarity and direction for what constitutes a potentially invalidating sale of goods.

Supreme Court Again Rewrites Patent Law on Enhanced Damages

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

SupremeCourtImage_1In a continuing trend of rejecting bright-line rules and multi-faceted tests created by the Federal Circuit, the Supreme Court last week issued an opinion in Halo Electronics, Inc. v. Pulse Electronics, Inc., (No. 14-1513) in which the Court unanimously vacated and remanded the Federal Circuit’s decision affirming the District Court’s decision not to award enhanced damages under the Federal Circuit’s precedent in In re Seagate Technology, LLC, 497 F.ed 1360 (Fed. Cir. 2007) (en banc). The Court found that the Seagate test was too rigid and did not give trial courts sufficient discretion to award enhanced damages under 35 U.S.C. § 284. Chief Justice Roberts wrote the decision for the Court.

Background

The Patent Act provides that the Court “the court may increase the damages up to three times the amount found or assessed.” 35 U.S.C. § 284. In response to this language, the Federal Circuit has created various tests for courts and litigants to following, culminating with its most recent pronouncement in Seagate. Under the Seagate test, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent,”without regard to “[t]he state of mind of the accused infringer.” This objective prong is not satisfied if the accused infringer later developed a reasonably defense at trial, even if that defense was not known or relied on during the time of the infringing conduct.

If the patentee can demonstrate objective recklessness, it must show by clear and convincing evidence that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.” If the patentee meets this subjective prong, the court is entitled to award enhanced damages.

The Supreme Court Rejects this 2-step Process

While initially recognizing that “[t]he Seagate test reflects, in many respects, a sound recognition that enhanced damages are generally appropriate under § 284 only in egregious cases,” it found that the test “is unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.”

In particular, the Court was troubled by the fact that an accused infringer could avoid enhanced damages in cases where it intentionally ignored the patentee’s patent if its lawyers could later develop a reasonable defense during litigation that was never relied on previously. Under the Seagate test, a patentee could never get past the first objective prong.

Having said that, the Court also stressed that enhanced damages should still be the exception, and not the rule. It traced the history of enhanced damages and noted that they were typically reserved for egregious cases and were “vindictive or punitive” in nature. The Court cautioned that a trial court’s discretion to grant enhanced damages is not boundless and that the Federal Circuit is in a unique position to evaluate the exercise of that discretion based on its long history of dealing with patent cases.

Finally, the Court rejected a clear and convincing evidentiary standard for proving entitlement to enhanced damages. Under § 284, only a preponderance of the evidence is necessary to obtain enhanced damages.

The Court concluded by stating:

Section 284 gives district courts the discretion to award enhanced damages against those guilty of patent infringement. In applying this discretion, district courts are “to be guided by [the] sound legal principles” developed over nearly two centuries of application and interpretation of the Patent Act. . . . Those principles channel the exercise of discretion, limiting the award of enhanced damages to egregious cases of misconduct beyond typical infringement. The Seagate test, in contrast, unduly confines the ability of district courts to exercise the discretion conferred on them. Because both cases before us were decided under the Seagate framework, we vacate the judgments of the Federal Circuit and remand the cases for proceedings consistent with this opinion.

Justice Breyer’s Concurrence

While agreeing with the majority’s opinion, Justice Breyer wrote separately to caution that awards of enhanced damages should be made only in egregious circumstances.

He also noted that an award of enhanced damages requires conduct beyond simple knowledge of a patent by the infringer. Justice Breyer explained that there are several legitimate reasons why an infringer may be aware of a patent that do not rise to the level of willful misconduct required. He also noted that opinions of counsel of non-infringement or invalidity are not required to defeat a claim for enhanced damages. For one thing, they can be extremely expensive and can deter legitimate innovation or otherwise upset the proper balance between the patent laws and promoting the progress of the science and useful arts.

Finally, he noted that enhanced damages are not a mechanism for compensating patentees for litigation expenses or other infringement-related costs. There are difference statutory provisions that address those concerns.

Conclusion

This is yet another case in which the Supreme Court has struck down a bright-line rule or multi-faceted test developed by the Federal Circuit. The Federal Circuit has tended to create these rules and tests in an effort to provide more clarity and certainty in the patent arena, even if these rules and tests lack a strong statutory basis. In contrast, the Supreme Court seems less concerned about clarity and certainty, and is more concerned in treating the patent laws like any other area of the law. It has repeatedly rejected efforts by the Federal Circuit to treat the patent laws as somehow different than other laws or not bound by the same rules and procedures. The Halo decision is another decision that brings the patent laws closer to the rest of the law.

Judge Determines That Star Trek Copyright Suit Against Fan Film Anaxar Can Proceed

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Last week, Judge Klausner from the US District Court for the Central District of California denied a fan film producer’s motion to dismiss a copyright infringement lawsuit brought by Paramount Pictures and CBS Studio, which own the copyrights in the Star Trek franchise. The case present some interesting issues regarding the interplay between copyright holders and fans that attempt to create works inspired by or based off of more famous works. The case is pending in Los Angeles and is captioned Paramount Pictures Corp. v. Axanar Productions, Inc. (No. 2:15-cv-09938-RGK-E).

Background

Star Trek is one of the most successful science fiction creations of the last fifty years. Created by Gene Roddenberry and first aired on television in 1966, Star Trek chronicles the adventures of humans and aliens in the future as they venture through space. The original television series has spawned numerous feature Enterprisefilms and television series, in addition to creating a huge and devoted fan base. The fan base is noted, in particular, for recreating and reenacting characters and scenes from the franchise, as well as creating new works based on the characters and events portrayed in the television series and movies. This lawsuit arose out of one such effort by a group of fans to create a movie based on a scene from the original television series when Captain Kirk meets one of his heroes, Garth of Izar, and discusses Garth’s victory against the Klingons in the battle of Axanar. Defendants created a script, received funding through various sources, and released a short film based on the Battle of Axanar that is a preview of their anticipated longer film. Plaintiffs filed suit claiming that Defendants’ efforts violated numerous copyrights that they own in the Star Trek franchise.

Plaintiffs’ Amended Complaint

In plaintiffs’ amended complaint, they set forth numerous examples of what they contend are infringing features or elements of defendants’ work, which include such things as various characters, alien races, costumes, settings, starships, logos, plot points, dialogue, and themes, some of which are shown below (Anaxar on the left, and plaintiffs’ on the right).

Uniform Comparison

Klingon Comparison

Starship Comparison

Defendants’ Motion to Dismiss

Defendants moved to dismiss the lawsuit on various grounds–that plaintiffs had failed to provide sufficient notice of what actions constituted infringement, that Paramount lacked standing to sue, that the allegations were not sufficient under the Twombly standard, that the various elements identified by plaintiffs were not protectable, that the claims were premature because the film had not been released, and that plaintiffs’ efforts amount to impermissible prior restraint.

Klingon Ship Comparison

The Court rejected all of these arguments at this procedural stage, noting (with a nod to the Star Trek franchise) that “[a]lthough the Court declines to address whether Plaintiffs’ Claims will prosper at this time, the Court does find Plaintiffs’ claims will live long enough to survive Defendants’ Motion to Dismiss.”

Klingon Amicus Brief

One of the more interesting aspects to this case was an amicus brief filed by the Language Creation Society. In its amended complaint, plaintiffs asserted that the Klingon language itself was protected by copyright. The Language Creation Society argued that the copyright laws do not protect a language itself. The Judge did not address this point in the opinion on the motion to dismiss, but this issue is an interesting one presented in a novel form. The amicus brief is a particularly good read, as it is interspersed with quotes and phrases in the Klingon language.Klingon Quote

Conclusion

The case is far from over, but it is an interesting window into the difficulties (both legal and otherwise) that a successful copyright owner faces in trying to creatively and economically control its works.

 

Federal Circuit Reverses Design Patent Claim Construction

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

In the wake of the Apple v. Samsung cases, the importance of design patents has become more visible. Whether a product infringes a design patent can sometimes be difficult to determine because design patents only protect the ornamental aspects of a design, and not the functional aspects. The Federal Circuit, in Sport Dimension, Inc. v. The Coleman Company, Inc. (No. 2015-1553) recently considered the interplay between ornamentation and functionality in a design patent.

Background

Coleman sells a variety of outdoor sporting equipment, including personal flotation devices. One of its products,  a flotation device with two arm bands and a torso piece, is protected by US Design Patent No. D623,714.

Flotation DeviceSport Dimension also sells personal flotation devices, including its line of Body Glove products that also have two armbands and a torso section.

Body GloveColeman brought suit against Sport Dimension, alleging infringement of the ‘714 patent.

The trial court adopted Sport Dimension’s claim construction, which expressly excluded the arm bands and side torso tapering as elements of the claim, because functional elements not protected by the patent. Coleman then moved for entry of a judgment of non-infringement in favor of Sport Dimension so that it could appeal the claim construction ruling.

The Federal Circuit reversed the claim construction, vacated the judgment of non-infringement, and remanded.

Analysis

The Federal Circuit began by noting that it is often difficult to use words to describe a design, which is why illustrations are an important part of design patents. Despite the limitations of words, the Court noted that it is often constructive for courts to construe design patents in order to guide the fact finder in determining infringement.

The Court then noted the law of infringement of design patents–a design patent cannot protect purely functional designs, but it can protect designs that are not primarily functional even if certain elements have functional purposes. Thus, design patents can be used with products that have elements that are both functional and non-functional, but the design patent will only protect the non-functional elements that are shown in the patent. Of particular interest to design patent litigators, the Court reviewed the key cases in the design patent arena.

In analyzing the patent in dispute and the trial court’s claim construction, the Federal Circuit found that the trial court went too far in excluding entirely the arm bands and tapered side torso from the scope of the patent. The Court agreed that these elements had functional aspects, but concluded it was improper to entirely exclude these elements. The test for infringement of a design patent is not an element-by-element comparison. Instead, infringement is to be assessed based on the overall design, excluding the functional aspects of certain elements (as opposed to excluding the elements entirely).

Based on this faulty claim construction, the Federal Circuit vacated and remanded.

Conclusion

This case highlights the difficulty that design patents present for courts and fact finders. Sometimes, the functional/ornamental aspects are difficult to distinguish and apply. Nonetheless, design patents are still an important piece of intellectual property for many companies and should not be discounted lightly.

Federal Circuit Recognizes Patent Agent Privilege

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitThe Federal Circuit recently decided an interesting case about whether there should be a patent agent-client privilege. In In re: Queen’s University at Kingston (Case No. 14-145), the Federal Circuit concluded that there should be such a privilege in a 2-1 decision written by Judge O’Malley (Judge Lourie joined the decision, and Judge Reyna dissented).

Background

Queen’s University in Kingston, Ontario, Canada filed a patent infringement lawsuit against Samsung Electronics Co., Ltd. in the Eastern District of Texas. During discovery, Samsung sought to discovery certain communications between Queen’s University employees and its registered patent agents. The district court granted a motion to compel, finding, in part, that there was no patent agent privilege. Queen’s University filed a petition for writ of mandamus with the Federal Circuit challenging the order.

Analysis

The Federal Circuit first determined that its law, and not the law of the regional circuits or state law should apply to determine whether a patent agent privilege might exist because the issue relates to patent-specific subject matter. It also noted that the issue was one of first impression at the Federal Circuit, but was one where there is conflicting authority at the district court level.

The Court then decided that it was appropriate to consider the writ given that once the documents were produced, there would be no easy way to undo the damage if a privilege existed. The Court also noted that the district court split on the subject favored it providing some clarity on the issue. The Federal Circuit then turned to the issue of whether it should recognize a patent agent privilege.

The Court found that Rule 501 of the Federal Rules of Evidence authorizes federal courts, in appropriate circumstances, to recognize new privileges. It further noted that it did so with some caution, as privileges restrict the flow of information and should not be created lightly.

The Court then looked to the Supreme Court’s decision in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), in which the Supreme Court recognized that patent agents perform acts that constitute the practice of law and that the regulation of patent agents is solely governed by the US Patent and Trademark Office.

In looking at the Supreme Court’s analysis in that case, the Court traced the history of patent agents and the nature of their work before concluding that a limited patent agent privilege is appropriate.

The Court next turned to what the scope of that privilege should be. Not all communications with a patent agent can be privileged.

Communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks, or “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate” receive the benefit of the patent-agent privilege.
Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.”

Based on the recognition of this new privilege, the Court grant the petition for a writ of mandamus, vacated the district court’s order on the motion to compel, and remanded for further consideration.

Monkeys Cannot Own Copyrights

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

l1aYeA little over a year ago, we discussed an interesting case where the owner of a camera that took a picture of a monkey could not register a copyright in the picture because the monkey was the one took a picture of itself. Well, that case reemerged last year when attorneys for PETA who “represent” the monkey filed a lawsuit in California arguing that the photographer violated the monkey’s copyright when he published pictures that the monkey took. (Naruto v. Slater, 3:15-cv-04324-WHO, C.D. Cal.) Last week, the Court granted the photographer’s motion to dismiss, holding that a monkey is not entitled to register a copyright with the Copyright Office or bring suit for copyright infrinement.

The monkey brought suit under Sections 106 and 501 of the Copyright Act (17 U.S.C. §§ 106 and 501), alleging that the publication of the photographs it took violated its copyrights in these photographs. The Court initially noted that there is no per se bar to an animal being a proper plaintiff in some limited circumstances, so it chose not to focus on that aspect of the case. Instead, the Court looked to the language of the Copyright Act, its legislative history, court opinions interpreting the Act, and the regulations of the Copyright Office. Taking all of these together, the Court found no indicating that Congress ever intended for animals to be able to hold copyrights or bring suit under the Act. In particular, the Court noted the Copyright Office has considered this very situation–whether a monkey can hold a copyright–and concluded that it cannot. See Compendium of U.S. Copyright Office Practices § 313.2 (December 2014).

So, for now at least, photographs taken by monkeys (and other animals) cannot be copyrighted by the animal.

2d Circuit Punts on Copyright Registration Question Again

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Think!An interesting copyright question continues to percolate in the Circuit Courts over what “registration” means as a prerequisite for filing a copyright claim in federal court. The Second Circuit, in The A Star Group, Inc. v. Manitoba Hydro, (No. 14-2738) noted the Circuit split on the issue but declined again to weigh in.

Under 17 U.S.C. § 411(a), a copyright holder must register its work before it can initiate a lawsuit against an infringer:

no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

The question is what is sufficient to satisfy the “registration” requirement–is the filing of the application sufficient, or does the application need to be accepted and granted by the Copyright Office?

Currently, the Circuit Courts on split on the issue. The Fifth and Ninth Circuits require only that the copyright holder file the application. See, e.g., Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Cosmetic Ideas Inc. v. IAC/InteractiveCorp,  606 F. 3d 612, (9th Cir. 2010). While the Tenth and Eleventh Circuits require that the Copyright Office grant the application. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990) ;  La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-05 (10th Cir. 2005). The Seventh Circuit appears to have taken conflicting views on this matter. Compare Chicago Bd. of Educ. v. Substance Inc., 354 F.3d 624, 631 (7th Cir. 2003) with Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004).

The Second Circuit chose not to wade into this issue and was able to decide the case without having to choose a side. At some point, however, the U.S. Supreme Court will likely need to resolve this dispute as the Circuit split continues. As it stands now, a copyright holder can face very different results depending on where the case is filed, which is not a helpful situation when a national right, such as a copyright, is involved.

Peace, Love, and . . . Trademarks?

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

In Juice Generation, Inc. v. GS Enterprises, LLC (Case No. 2014-1853), the Federal Circuit reversed a decision by the Trademark Trial and Appeal Board (No. 91206450) that sustained an opposition brought by GS Enterprises against Juice Generation’s attempt to register the mark “PEACE LOVE AND JUICE.” The Federal Circuit remanded for further consideration, finding that the TTAB “did not adequately address the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks.”

Background

Juice Generation operates a chain of juice bars in New York City. It attempted to register the mark “PEACE LOVE AND JUICE” with the USPTO in connection with juice bar services (disclaiming “juice”).

GS Enterprises has four registered trademarks in the restaurant services class that incorporate the words Peace and Love–“P & L PEACE & LOVE,” “ALL YOU NEED IS PEACE & LOVE,” “PEACE & LOVE,” and “P & L PEACE & LOVE NEW YORK.” Examples of two of its marks are shown below:

Peace Love Image 2 Peace Love Image 3

GS Enterprises filed an opposition to Juice Generation’s application, arguing that the “PEACE LOVE AND JUICE” mark created a likelihood of confusion.

The TTAB considered the 13 DuPont factors in analyzing the likelihood of confusion. It first found that Juice Generation had been using its mark for years without evidence of actual confusion, but it discounted this factor because it did not think that there had been “meaningful opportunities” for actual confusion to occur given the parties’ use of their marks.

The Board next looked to the dominant feature of Juice Generation’s mark (PEACE LOVE) and found it was virtually identical to GS Enterprise’s “PEACE & LOVE” mark.

The Board also looked to at least 26 examples of 3rd parties using similar combinations of Peace and Love in their marks–e.g., “PEACE LOVE AND PIZZA,” “PEACE LOVE YOGURT,” and “PEACE, LOVE & BEER,” but did not find that there was sufficient evidence to show that consumers recognized that other entities were using similar terms in their marks.

On balancing this evidence, the TTAB concluded the there was a likelihood of confusion with consumers and sustained GS Enterprises’ opposition.

The Federal Circuit Vacates and REmands

The Federal Circuit was clearly troubled by the conclusions the TTAB reached. It first noted that likelihood of confusion is a legal conclusion that it reviews de novo, and that it is to be analyzed using the 13 DuPont factors.

The Federal Circuit was concerned by the TTAB’s failure to place much weight in the numerous examples of other marks that used the words “PEACE” and “LOVE” together with other terms. The Court found these examples to be “powerful” evidence that GS Enterprises’ marks were not strong on their face. With so many similar marks, there was substantial prima facie evidence that GS Enterprises marks were not strong. As a result, the Federal Circuit remanded the case to the TTAB to conduct a more thorough analysis of the strength of GS Enterprises’ mark in light of these numerous similar marks.

The Federal Circuit finally noted that the TTAB improperly considered just a portion of Juice Generation’s mark–the PEACE LOVE part–without considering whether the mark as a whole might convey a meaning distinct from GS Enterprises’ marks. As a result, the Federal Circuit also remanded for the TTAB to provide a more thorough analysis of the mark as a whole.