Once More with Feeling: Patent Eligible Subject Matter Part 2

July 23, 2021

For those fortunate enough to sit on the sidelines, there is the observation that many patents and patent applications have met their demise in the Federal Circuit because of patent ineligible subject matter. In my previous article I identified a large group of patents and patent applications which are foreseeably patent ineligible: that is, abstract ideas implemented by conventional computers. In this article I identify biomedical innovations that comprise patentable subject matter, while for other innovations no amount of application drafting expertise results in patent eligible subject matter.

Unlike computer related inventions comprising abstract ideas, for biomedical inventions the issue is generally whether the invention primarily comprises a (i) natural phenomenon, such as relationship between substances in a human body, or (ii) a natural law such as that for gravity.[1] The United States Supreme Court has held that naturally occurring subject matter is not patent eligible, in large part because private ownership would hinder medical innovation. Allowing patent eligibility would also prevent people from obtaining proper medical care because (i) their physician could not access the private owned natural medical subject matter, or (ii) it was prohibitively expensive to do so.

The Federal Circuit has held that diagnostic procedures which, without more only detect and quantify naturally occurring physiological events, are not patent eligible. However, the situation differs for medical treatment because these innovations (i) address a process which relies upon underlying natural human physiology, but (ii) sufficiently build upon naturally occurring events with new practical steps. For example, in Boehringer Ingelheim Pharmaceuticals et al. v. Mylan Pharmaceutical, Inc. et al.[2], the patent addressed treatment of diabetes mellitus with biochemical inhibitors metabolized by the liver instead of the kidneys. The Federal Circuit found the treatment was patent eligible, because it comprised a particular method with a specific biochemical inhibitor at quantified doses. Similarly, for a laboratory technique based upon naturally occurring cell free fetal DNA, the Federal Circuit held that the method of concentrating this fetal DNA, was patent eligible, although the natural correlation between DNA length and designation as fetal, was not.[3]

In sum, treatments and laboratory methods, but not diagnostic methods, are much more likely to be patent eligible if properly drafted. However, physicians and pharmaceutical companies should greatly appreciate these present criteria for biomedical subject matter eligibility and ‘weigh in’ to support its continued viability. Otherwise, if colleagues privately own patents for naturally occurring medical subject matter, physicians and other pharmaceutical companies could not (i) continue related research or (ii) diagnose their patents without high fees and permission of competitors.

© 2021 Adrienne B. Naumann. All rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann@wordpress.com.


[1] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012); Association for Molecular Pathology v. Myriad Genetics, 569 U. S. 576 (2013). In Mayo the Court held that a diagnostic method for detecting  thiopurine metabolite levels and toxicity of thiopurine was naturally occurring. Furthermore, there was nothing else to the claimed diagnosis method except observation and mental steps. According to Mayo, each patent subject matter eligibility requires a two-step inquiry:

  • Is a claim sentence as a whole directed to a natural event or natural law?
  • If so, is there an inventive concept within a claim sentence which transforms the naturally occurring event/law into patent eligible subject matter?

[2] 803 Fed. Appx. 397 (Fed. Cir. 2020) (non-precedential).

[3] Illumina, Inc. et al. v. Ariosa Diagnostics, Inc. et al., 952 F.3d 1367 (Fed. Cir. 2020) modified at 967 F.3d 1319,  petition for cert. dismissed, May 21, 2021.


Many called few chosen: Patent Eligibility

July 22, 2021

The United States Court of Appeals for the Federal Circuit [hereinafter the ‘Federal Circuit’] has invalidated a significant number of patents and patent applications based upon patent ineligible subject matter.[1] Most of these decisions address computer related subject matter, while the numerically less but equally important biomedical patents, are guided by the same criteria from the United States Supreme Court [hereinafter ‘the Court’]. Many of these patents and patent applications from 2020 through 2021 were originally filed on or about the time that the Court modified patentable subject matter eligibility law. As a result, the day of reckoning has arrived in the Federal Circuit for those who are vulnerable under the modified law.[2]

The good news is that there are definitely foreseeable patterns with computer related inventions:

  • Inventions exclusively comprising an abstract idea implemented by conventional and/or

              computer components are clearly and unequivocally never patent eligible subject matter.    

              These inventions will never be protected by patents despite any drafting efforts.                 

              Fortunately, these situations are easily recognized even during initial client meetings,  

              and this subject matter appears at a practitioner’s office relatively often.    

  • In contrast, claims designating improvements to the actual computers, computer network, computer components or other mechanic devices could be patent eligible. Whether the patent or patent application survives the test depends in large part how the application was drafted and especially the claim sentences.
  • If a claim sentence designates an industrial, laboratory, or other technical process in which the invention improvement comprises an additional computerized step, then the process could be patent eligible.[3]Again surviving a patent eligibility challenge depends upon how the application specification, and to a greater extent how the claim sentences, are drafted.

When drafting practitioners should consider at least the following:

  • Does the application drafter hold at least one degree in a computer-related science or technology?
  • Does a claim encompass a functional or overbroad result and thereby comprise pre-emption of an entire technology?

Practitioners should review their drafting techniques to avoid applications which will not survive a section 101 challenge, and even if this challenge occurs many years later.[4] Unfortunately, the Federal Circuit has not yet clarified how a specification may support claim designations. Nevertheless, based upon the above pattern the practitioner may accurately predict which inventions may be patentable and immediately advise his clients accordingly.

© 2021 Adrienne B. Naumann, Esq. All rights Reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann@wordpress.com.


[1] See 35 U.S.C. section 101 (patent eligible subject matter). Under Alice Corporation Pty. Ltd. v. CLS BankInternational et al., 573 U.S. 208 (2014) and Mayo Collaborative Services et al. v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), the appropriate criteria for determining subject matter ineligibility are: (i) is the claim as a whole directed to an abstract idea and (ii) if so, is there an inventive concept that otherwise transforms this characterization of the claim?

[2] The Federal Circuit does not follow the 2019 U.S. patent office subject matter eligibility policy. 

[3] See Diamond v. Diehr, 450 U.S. 175 (1981).

[4] However, these challenges are also occurring during the America Invents Act post issuance proceedings in the U.S. patent office.


Just One of Those Things: Request for non-publication of your patent application

June 26, 2021

U.S. patent practitioners are familiar with patent office form PTO/SB/35 i.e., request for non-publication [hereinafter ‘the form’].[1]  Proper submission of this form prevents the complete disclosure of a United States utility patent application on the internet unless and until the application becomes a full-fledged patent.[2] Without this form, the United States patent office will publish the entire application on the internet approximately eighteen after its submission. Thereafter the application remains publicly available on the internet indefinitely. Furthermore, the application remains publicly available even if the applicant never receives a patent thereon!

So, here are the resulting significant disadvantages of failing to properly submit this form. First, the applicant’s business competitors may easily access an invention’s innovative features because they observe them online. These business competitors may then commercially profit during an application’s pendency in the patent office, and where this pendency could last several years or forever. Furthermore, the application must fulfill several legal requirements for the patent owner to recover for infringement which occurred prior to the patent’s issue date. Unfortunately, these legal requirements prove extremely difficult to achieve as a practical matter,[3] and in any event they are extremely expensive to litigate.

The significant prohibition to a request for non-publication is the submission of an application in another country   . Fortunately, if an applicant submits a request for non-publication and thereafter decides to submit an application internationally, there is a patent office form for withdrawal of the original non–publication request. However, this ability to change one’s mind in good faith is not symmetrical: If the applicant does not submit the written request with the application, then it cannot be submitted at a later date.  Consequently, applicants should carefully evaluate their markets prior to finalizing their patent strategy. In particular these applicants should resolve whether they should risk forfeiting their entire research and development investment. In other words, is total online disclosure worth this risk compared to the value of as yet unrealized sales in other countries.[4]

Another downside of publishing a patent application is its greater vulnerability while pending in the U.S. patent office. Although issued patents receive a presumption of validity, pending patent applications are not so entitled. Moreover, under U.S. patent law third parties (including business competitors) may submit adverse documents to the patent examiner.[5]These documents often decrease the possibility of achieving a patent if they comprise information which is relevant to patentability of the applicant’s subject matter. In sum, is there an easier cost-effective manner by which to prevent these folks from accessing your application than by submitting a request for non-publication?

© 2021 Adrienne B. Naumann, Esq. All rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.


[1] There is no patent office fee for submission of a request for non-publication

[2] 35 U.S.C. section 122 (b)(2)(B); 37 C.F.R. 1.213.

[3] 35 U.S.C. section 154(d). The requirements are (i) an accused infringer must have had actual notice of the published patent application and (ii) the invention as claimed in both the published application and patent must be substantially identical.

[4] The author’s U.S. clients have accessed sufficiently large U.S.  markets while their inventions are most vulnerable. On the other hand, applicants from countries such as Israel, the Netherlands or Belgium may not have this option.

[5] 35 U.S.C. 122(e).


We’re mad as h— and we’re not going to take it anymore![1] American Axle Manufacturing, Inc. v. Neapco Holdings LLC

May 31, 2021

The U.S. patenting community became disconcerted after the U.S. Court of Appeals for the Federal Circuit decision [‘Federal Circuit’] in the above captioned case. [2] The Federal Circuit has previously found patent ineligible subject matter whenever a patent expressly claimed a natural law or natural phenomenon. However, this decision is noteworthy because the court (i) found ineligible subject matter based upon an implicit natural law and (ii) applied this natural law to the mechanical arts.

U.S. Pat. No. 7,774,911 [’911 patent] discloses a method for attenuating [damping or tuning] vibrations within driveline propeller shafts [prop shafts] with hollow devices known as liners. These liners, positioned concentrically within the shafts, attenuate vibrations transmitted through a vehicle’s shaft assembly. The asserted improvement is liner construction to attenuate two kinds of shaft vibrations simultaneously. In contrast, previously each kind of prop shaft vibration was necessarily attenuated individually by previously existing devices.

American Axle appealed the summary judgement of non-infringement based upon patent subject matter ineligibility.  The Federal Circuit agreed with the district court based upon the patent eligible subject matter test of Alice Corporation v. CLS Bank International,[3] and Mayo Collaborative Services v. Prometheus Laboratories.[4] Under Step 1 of this test, the court resolves whether a claim is directed to an abstract idea, natural law or natural phenomenon. If so, the court then decides whether an element or ordered combination within the claim comprises an inventive concept which adds a significant feature to the otherwise ineligible subject matter.

In this instance, under Step 1 the Federal Circuit concluded that the claims were directed to Hooke’s law, i.e., a natural law that relates vibration frequency to stiffness and mass. The Federal Circuit further observed that under Step 1 that the first independent claim could be achieved by numerous methods, and that the claims merely describe a desired result. In sum, the Federal Circuit concludes that there was application of a natural law without any limitations designated for achieving the damping result.   Under Step 2 of the test, the court found no inventive concept to save the claim from being directed to Hooke’s law. Instead, the remaining steps of the claim amounted to more than conventional pre- and post-solution activity and the inventive description of designing the liner is absent.

The dissent[5] challenged the Federal Circuit majority to explain how Hooke’s formula for spring compression results in patent ineligible subject matter under these circumstances. This dissent also observed that the majority characterized prop shaft tuning as patent ineligible, but that this industrial method has historically been patent eligible. If the Supreme Court grants certiorari will patent subject matter eligibility rise or fall on Hooke’s formula for a unidimensional spring?

© 2021 Adrienne B. Nauman. All rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress. com.                                      


[1] Howard Beale in “Network.”

[2] American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al., 967 F.3d 1285 (Fed. Cir. 2020), petition for cert. filed Docket No. 20-891 (Dec.  28, 2020).

[3]  573 U.S. 208 (2014).

[4] 566 U.S. 66 (2012).

[5]  967 F.3d 1285 (dissent).


WHAT IS IT HARD?[1] Photography Part 2

May 5, 2021

                                               

Many of you may recall that in part 1 of this two-part series, I addressed the perils of trademark and copyright infringement lurking within innocently created photographic images and electronic images. In this article we address the additional landmines of: rights of publicity, as well as false light and other invasions of privacy liabilities.  Whenever photographers commercialize images, they should vet all these potential legal hazards: This is an important review even if under U.S. law the photographer initially owns all the copyright to an image.[2]

In the United States, the right of publicity preserves an individual’s control over his or her own physical appearance, voice, likeness and image, as well as distinctive personal attributes and recognizable features [that is, the persona].[3] Moreover, in some states the right of publicity remains enforceable after death. The right of publicity protects economic interests so each person may exclusively profit from displaying or otherwise publicizing his or her persona. For example, third persons are liable if they misappropriate a persona to, although not exclusively, falsely endorse a product.   Although most court cases involve celebrities, all persons have this right to control and profit from their own personas. For these reasons, a photographer should initially obtain the written permissions of individuals prior to creating images, and especially if these images will be used commercially.

Photographers and other image creators should also refrain from portraying persons in a manner known as false light.[4] False light liability is a member of the family of misdeeds collectively known as invasion of privacy. False light liability protects a person from intentional or reckless widespread distribution of an image which, although bona fide, results in a misleading derogatory impression which would offend most people. An example of potential false light liability comprises a photograph of a corporate officer who has been indicted for bribery. Unfortunately, in the same photograph, next to the corporate officer and clearly recognizable, is an innocent bystander. The implication is there is an association with the indicted individual, and this association could injure the bystander’s reputation in the relevant business community. That the photograph is a bona fide and accurate image is not a defense if there is false light liability.

Other invasions of privacy in photography include disclosure of private facts without consent of a person who is visible in the photograph or image.[5] An example of this liability would be the public display of a photograph for a person recovering from a face lift. Another actionable invasion of privacy comprises intrusion into private affairs or facts without consent.[6]Intrusion differs from public display of private facts, because liability exclusively arises from obtaining the photograph from a location in which the photographer had no right to be. Intrusions, such as stalking and repeated attempts to take a person’s photograph without consent, may also be actionable. However, a court may subordinate privacy rights if a person’s image is newsworthy or of significant public interest.[7]

© Adrienne B. Naumann 2021. All rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.


[1] Elle Woods in “Legally Blonde.”

[2] See W.L. Prosser, LAW OF TORTS, pp. 802-83 [West Publishing Co.: St. Paul 1979].

[3] Zacchini v. Scripps-Howard Broadcasting Company, 433 U.S. 562(1977).

[4] See Benton v. Little League Baseball, Inc., 2020 Ill. App. 190549.

[5] Pepper v. Battle Creek Health Systems, 2020 Mich. App. Lexis 4866.

[6] Lunsford et al.  v. Sterilite of Ohio, L.L.C., 165 N.E.3d 245 (Ohio App. 2018).

[7] See Harvey v. Systems Effect, LLC., 154 N.E. 3d 293 (Ohio App. 2020).


GUEST ARTICLE: Creating Career Pathways for High School Students Not Going On To a 4-Year College

January 19, 2021

As Chair of the 132-member Evanston Mayor’s Employer Advisory Council (MEAC), I have learned a few lessons in the last year.  Briefly, MEAC was formed to bring together the five local stakeholder groups: employers, Evanston Township High School, Oakton Community College, local and regional government departments, and not-for-profit workforce development organizations. Together the mission of these groups is the creation of career pathways for high school graduates not going on to college after graduation.  The best part of this is that all of the stakeholder groups are all at the same table at the same time for better coordination! 

This year, we pivoted to doing our work remotely.  When the pandemic hit and closed the schools, we helped set up paid, 12 week, on-site summer internships that were made available for the Class of 2020 graduates.  This turned out very successful with 15 graduates placed with local employers in their career interest area. 

At the start of this school year, we developed seven hour-long virtual career pathway panel presentations focused on careers that do not require a college degree.  Each featured four employers and Oakton Community College.  School staff and parents also were able to join. The school recorded each presentation and posted them on their web site.    

We have recently begun to reach into our middle school at their request.  Many young people discover their areas of interest early, especially in 7th and 8th grade.  Our goal here is to facilitate their transition to high school and help them plot their course with curriculums that support their interest and long-term career success. 

We have learned a few things along the way:

Many high school students do not know why they are in school!  These students tend to say there is no reason to go.  Of course, we know that this is preparing them for the rest of their lives.  We need to do a better job explaining to all students that going to school is not meant to torture them but to give them the tools to succeed in life.  It is very important that schools acknowledge the needs of each individual student and give them the tools to make them successful.  This may mean adjusting curriculums to support those students.  Not every student needs AP classes or Calculus for example.  Enough said!

Most employers require at least 6th-grade math and reading skills as a minimum.  The trades are especially rigid on this.  The students need to know this before they enter the workforce so they can avoid unpleasant surprises.  Repeat this information often to them!

Most employers require their employees to be drug-free.  The fact that marijuana is legal does not make it acceptable in the workplace.  Alcohol is legal too but you cannot show up for work under the influence.  Another thing students need to know.  This cannot be reinforced enough!    

More young people today are looking at alternatives to a 4-year degree.  Cost and the return on investment are critical reasons for this.  There is a lot more publicity nationally about student debt and the value of a 4-year degree.  At our career panel presentations, we ask the presenters to tell their story as many did not go to college but got good, relevant post-secondary training leading to successful careers.  Students really pay attention to these stories, especially if the presenter is closer to their age. 

The majority of all high school graduates will require some sort of post-secondary training to maximize their chances at a good life.  This is true for even the most basic entry to a career path.  This could be on-the-job to specialized training for just about any career pathway.  Constant learning is the norm.  Community colleges offer a great deal of support in this area.  But applicants must be proficient at reading and probably math.  It is a shame to spend money on remedial classes at these colleges to get a student prepared.  These remedial classes do not count towards a certificate or degree!

Many if not most employers do not have the processes and procedures to successfully employ recent high school graduates.  Recent high school graduates may be very smart but employers must remember they are teenagers!  Many employers are not set up to bring in these young people.  They need to be trained and mentored for the best chance of being successful.  Retention of these young people requires more than just putting them in an entry-level position and not insuring their supervisors are trained to make them successful.  It takes a village!! 

Neil Gambow, Chair – Mayor’s Employer Advisory Council


“WHAT IS IT HARD?”* Photography Part 1

November 6, 2020

Has anybody ever considered the legal consequences of taking photographs of famous or not so famous places at a family outing or vacation destination? Most people do not think about the legalities, but if anyone considers using their photographs for commercial purposes, then there are an amazing number of legal land mines to avoid.  First the good news: The photographer owns the copyright in his or her actual creation of a two-dimensional photographic image.[1] This copyright protects features such as lighting, positioning of the subject matter, and the angle at which the photograph is taken.

However, the photographer’s rights often end here. For example, if the photograph comprises an image of sculpture or statues, then one cannot use the image unless an exception to copyright infringement applies.[2] One such exception is that there is no copyright infringement liability if a photographer captures a two-dimensional image of architecture[3] (i) from a position in a public space, or (ii) the building is located within a public place.[4] In fact, even if a photographer creates an image of a building interior from a public location, then there is generally no copyright infringement liability.[5]

However, images of non-architectural building features taken from a public space could result in copyright infringement liability. For example, if a two-dimensional design is attached to a building exterior, then the design may comprise its own independent copyright eligibility.[6] Moreover, if a sculpture comprises an integral part of the architecture then a dispute could arise on whether the sculpture is a separate copyright eligible component.[7] In other words, if the sculpture is integrally part of the architectural design, then a third party may properly (i) create images of the building for commercial purposes (ii) from a public place, or if the building is located in a public place. [8]

In addition to copyright, photographers may inadvertently create images comprising subject matter under trademark protection. For example, numerous building and business owners hold federal trademark registrations for images of the Rock and Roll Hall of Fame building facade as well as the Empire State Building. [9] If photographers create works which include these images then they are most likely liable for trademark infringement.

Elle Woods in “Legally Blonde.”

©2020 Adrienne B. Naumann, Esq. All rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.


[1] 17 U.S.C. 102(8).

[2] Davidson v. U. S., 138 Fed. Cl. 159 (Fed. Cl.  July 18, 2017) (fair use of sculpture); Gaylord v. U. S., 595 F.3d 1364 (Fed. Cir. 2010) (photograph of statues resulted in copyright infringement). 

[3] 17 U.S.C 101(definition of architecture).

[4] 17 U.S.C. 120(a).

[5] Kitchen & Bath Concepts of Pittsburgh LLC v. Eddy Homes, 2016 U. S. Dist. LEXIS 177016 (W.D. Penn. December 22, 2016) (photographs of constructed work, and within a building visible from a public place, do not comprise copyright infringement.).

[6] Falkner v. GM_LLC, 393 F. Supp. 3d 927 (C. D. Calif. 2018)(mural on exterior building wall is not part of a parking garage under 102(a) as a matter of law); but see Mercedes-Benz USA LLC v. Lewis et al., 2019 U. S. Dist. LEXIS 154818 (E.D. Mich. September11, 2019) (plausible claim that a party photographed murals as part of publicly visible buildings without copyright infringement).                  

[7] See Leicester v. Warner Brothers, 232 F.3d 1212 (9th Cir. 2000).

[8] Id.

[9]  See Rock and Roll Hall of Fame and Museum et al. v. Gentile Productions et. al., 134 F.3d 749(6th Cir. 1998) (posters of building’s exterior facade); ESRT Empire State Building LLC v. Michael Liang, 934 F. Supp 868 (N.D. Ohio 1996); see also New York Stock Exchange v. New York, New York Hotel, 293 F.3d 550 (2d Cir. 2002)


Time flies when you’re having fun: learning U. S. contract basics

June 8, 2020

Ideally, every person should understand the fundamentals of contracts, because they determine so much of how we interact with others.  A contract is actually a mutual promise to exchange benefits, or refrain from certain acts, in the future. Depending upon the law in your state, certain contracts or even individual contract sentences are written in a particular manner to be enforceable. A contract may also be oral or written, but some contracts must be written to be enforceable, such as those for certain real estate transactions.

Example, Company B promises to send Company A one hundred widgets within thirty days. However, Company A need not ever pay for these widgets. This is an agreement but not a contract. Why? Because the promises should be mutual, but Company A has no obligations whatsoever.

The initial section of a contract generally comprises the parties’ names, addresses and their expectations, as well as how each party will provide a benefit to the other. For example, in return for one thousand dollars from retailer Company A, Company B provides widgets, because company B has expertise in producing widgets. Definitions of at least some contract terms is usually necessary. For example, in a non-disclosure contract which subject matter is considered confidential. As another example, does the term ‘widgets’ include accessories that reversibly attach to widgets?

One section of a contract designates obligations and performances of each party to the contract. For example, in return for payment of $1,000.00 from company A, Company B must send 100 widgets to Company A (i) within thirty days from Company A’s request therefore, and (ii) in no more than two identical deliveries of the widget request. Not surprisingly there is a complementary section which memorializes consequences of failure to meet performance obligations. In this section the parties will agree upon which failures comprise ‘deal breakers’ for disengaging from the entire contract.

If there is a deal breaker, then the parties agree upon a section in which the remedies for what is known as a ‘major breach’ are designated. Examples include (i) money damages or (ii) a court ordering a party to perform a specific act or refrain from doing an act.  However, there should also be a procedure in the provisions which allows parties to leave a contract even if no deal breaker occurs. For example, a residential lease may require sixty-day notice to the landlord, while other contracts, such as advertising may automatically expire, or automatically renew after one year.

It is very important to obtain the dated signatures of the persons with authority to sign the contract. For example, in business each party should be sure that the person signing the contract has the authority to hold a company legally responsible for contract performance. It is also important to be aware of potential landmines. For example, there should be a contract provision stating that one excused obligation or performance does not excuse future similar failures to perform. There should also be a statement designating the state law governing the contract, as well as the geographic location in which a lawsuit should commence.  However, these are just a few provisions which should appear in contracts.

Please keep in mind that although the parties should understand the contract, only an experienced attorney should draft the actual document.

© 2020 Adrienne B. Naumann, Esq., all rights reserved. Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com.


It’s the claim preclusion stupid: Lucky Brand Dungarees v. Marcel Fashions

June 4, 2020

In Lucky Brand Dungarees, Inc., et al. v. Marcel Fashions Group, Inc., 590 U. S. ___ (2020) the United States Supreme Court [hereinafter the Court] held that new defenses could be raised in related litigation between the same parties if later claims were different from claims of an earlier proceeding. More specifically, the Court concluded that there was no common nucleus of operative facts when infringement claims from a proceeding lawsuit were directed at different trademarks at different times, although with identical parties.

A detailed knowledge of the litigation history is crucial to understanding the Court’s decision. During the 1980s Marcel Fashions [hereinafter Marcel] federally registered the trademark “Get Lucky” for clothing. In the 1990s Lucky Brand commenced using the mark “Get Lucky “as well as other marks including the word “Lucky” for these same products. In 2003 Marcel and Lucky Brand reached a trademark infringement settlement in which (i) Lucky Brand would refrain from using “Get Lucky” while (ii) Marcel would release Lucky Brand from infringement liability for Lucky Brand’s marks comprising the word “Lucky.”  In 2005 Lucky Brand commenced a second lawsuit in which Marcel counterclaimed that Lucky Brand continued to infringe Marcel’s mark “Get Lucky.” No other marks were at issue in these 2005 counterclaims for which judgement was entered in favor of Marcel.

In 2011, Marcel commenced a third lawsuit for trademark infringement by Lucky Brand. This time liability was based upon Lucky Brand’s marks comprising the word “Lucky,” but not for the phrase “Get Lucky.” Lucky Brand asserted as a defense that this claim was settled in 2003, and this settlement absolved Lucky Brand of infringement liability for marks comprising the word “Lucky.” Marcell contended that this defense should have been litigated in the second 2005 lawsuit, and because defendants failed to do so they could not raise it in the pending 2011 litigation.  Lucky Brand replied that the 2005 claims and 2011 claims differ from each other with respect to Lucky Brand’s conduct, timeline and theories of liability.  According to Lucky Brand, because Marcel raised a claim in 2005 only for “Get Lucky” then Lucky Brand could raise this settlement defense against a new claim for exclusively Lucky Brand’s remaining marks comprising the word ‘Lucky.’

The district court dismissed Marcel’s claims, but the U. S. Court of Appeals for the Second Circuit vacated and remanded based upon the doctrine of defense preclusion. The Court reversed and remanded the Second Circuit’s decision. The Court held that defense preclusion must satisfy the requirements for claim preclusion in this particular case.  Claim preclusion prevents parties from litigating issues which could have been raised and decided in a prior action.  Claim preclusion also requires that the claims in earlier and subsequent proceedings were identical to each other, or otherwise arose from the same nucleus of operative facts. In this instance, the 2005 claim was directed exclusively at trademark infringement of “Get Lucky.” In contrast, the 2011 lawsuit was directed exclusively to purported infringement by Lucky Brand’s marks comprising the work “Lucky,” but not including the term “Get Lucky.” Because these two lawsuits were directed to completely different marks and different conduct, there was no nucleus of operative facts between them. The Court also observed that claim preclusion generally does not bar claims which arise from events postdating the filing of an initial complaint, because these events often create new operative facts supporting a different claim.

© 2020 Adrienne B. Naumann, all rights reserved. Ms. Naumann does mot sponsor or endorse the advertisements at adriennebnaumann.wordpress.com


Peaches, peanuts and statutes oh my! Georgia v. Public. Resource

May 6, 2020

The United States Supreme Court [hereinafter ‘the Court’] recently held that annotations[1] to the official Georgia state statutes are not copyright eligible. As a result, Georgia, as well as other state government entities cannot prevent third persons from publishing government documents if these documents originated from a judge or a state legislature.[2]

This story began when Public.Resource.org [hereinafter ‘Public.Resource’] posted the official Georgia state statutes/code online to the public, along with code annotations. Georgia did not distribute the annotations to the public, although it did publish the official statutes without a fee. When Public.Resource publicly posted the annotations without Georgia’s permission, Georgia sued Public.Resource for infringement of the state’s copyright in the annotations. Public.Resource then sought a declaratory judgment that the entire Georgia official code, including the annotations, were not copyright eligible. The district court held that Georgia owned the copyright for the annotations because they were not enacted into law, and therefore Public.Resource had infringed this copyright. The Eleventh Circuit reversed and rejected the district court’s decision under the judicially created government edits doctrine.[3]

Before the Court, Georgia contended that under the government edits doctrine documents created by  government officials require force of law to be copyright ineligible.  However, in this case annotations to the official state statutes/code were written by private vendor LexisNexis Group under a work for hire agreement. Therefore, the annotations did not exhibit force of law, because they consisted largely of judicial decision summaries by a private vendor and not the judicial decisions themselves. Georgia further contended that under the Copyright Act the annotations comprise original works of authorship by LexisNexis Group, and therefore are copyright eligible. However, according to Public.Resource the correct question was whether the annotations were created by the state legislature and its commission in their capacities as government officials. Public.Resource also maintained that under the government edits doctrine, written works created by government officers during their duties are never copyright eligible.

The Court agreed with Public.Resource and affirmed the judgement of the Eleventh Circuit. The Court held that the correct inquiry under the government edits doctrine is whether the written work was created by a judge or legislator in the course of their government duties. The Court further held that its own precedent did not require that these written works exhibit force of law to be copyright ineligible.  Here a state commission comprised largely of legislators supervised the creation of the annotations. The state statutes, together with the commission’s annotations, are also prominently designated and otherwise referred to as Georgia’s official state code. Any other result would disadvantage citizens  whenever they need to know, for example, which published statutes are actually unconstitutional and unenforceable according to summarized judicial decisions.

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[1] These annotations include summaries of judicial opinions construing corresponding statutory provisions, summaries of state attorney general opinions and related legal reference materials.

[2]  Georgia et al. v. Public.Resource.org, Inc., 590 U.S. ____ (2020).

[3] The Court created the government edits doctrine, in part by holding that judges could not assert copyright in work created in their capacity as judges. See Wheaton v. Peters, 8 Pet. 591 (1834); Banks v. Manchester, 128 U.S. 244 (1888); Callaghan v. Meyers, 128 US. 617 (1888).