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.

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

[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).


Beware of whom you hook up with: Romag Fasteners v. Fossil

April 30, 2020

In Romag Fasteners, Inc. v. Fossil Group, Inc. et al., 590 U. S. __ (2020) [hereinafter ‘Romag’ and ‘Fossil’], the United States Supreme Court [hereinafter ‘the Court’] held that trademark owners in infringement lawsuits may receive lost profits without establishing willful conduct by the infringer. The decision also held that the Lanham Act does not require willfulness for such an award, and that the alternative interpretation conflicts with explicit mental state requirements for other remedies under the Act.[1]

This story begins after Fossil licensed Romag’s snap fasteners to place in leather products at Fossil’s associated manufacturer in China. Although Fossil invested in protection against counterfeiting for other vendors, it failed to do so for Romag’s fasteners. As a result, the Chinese facility produced leather goods with counterfeit fasteners displaying Romag’s mark.   After Romag sued Fossil, the jury concluded that Fossil and associated retailers infringed Romag’s trademark. However, the jury also concluded that Fossil did not do so willfully, and therefore Romag would not receive Fossil’s profits from counterfeit products. Upon a second appeal by Romag, the United States Court of Appeals for the Federal Circuit affirmed the district court’s decision to decline an award of profits.

Before the Court, Fossil contended that (i) the Lanham Act at 35 U.S.C. section 1117(a) (i) requires  willfulness for profits based upon the phrase “according to the principles of equity,” and (ii) thereby this section ushers in pre-Lanham Act decisions which required willful behavior. However, Romag contended that section 1117(a) by its own terms does not require willfulness for an award of profits due to  infringement.[2]  In contrast and as an example, the Act explicitly requires willfulness where someone dilutes a famous trademark under section 1125(c).[3] As another example, section 1114(a) — causes of action for infringement of registered marks —- does not expressly include a mental state requirement. Furthermore, “principles of equity” in section 1117(a) does not incorporate pre-Lanham Act decisions, because these decisions did not demonstrate a willfulness requirement for a profits remedy in a uniform or well established manner.

The Court vacated and remanded the Federal Circuit’s decision. In so doing it held that although the Lanham Act requires willfulness for remedies under other statutory provisions, section 1117(a)[4] does not expressly require willfulness for a profits award. The Court based this conclusion upon the Act’s plain language as well as the requirements of specific mental states for liability and remedies in other provisions of the Act. The Court also disagreed with Fossil that the phrase “subject to the principles of equity” indirectly ushers a willfulness requirement into 1117(a). Instead, if Congress had included a willfulness requirement under section 1117(a), it would have done so directly and consistently with other explicit state mental state requirements in the Act. The Court also observed that, in any event, pre-Lanham Act decisions solely support the generic conclusion that mental state is relevant for award of an appropriate remedy.

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

[1] The Lanham Act is the federal trademark statute in the United States.

[2] 15 U.S.C. section 1117(a) reads in relevant part:

.  .  . when. . . a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c). .  . shall have been established. . . the plaintiff shall be entitled.  .  . and subject to the principles of equity, to recover (1) defendant’s profits.  .  .  .”

[3] Trademark dilution is use by another party that (i) lessens the association consumer have with a well-known mark or (ii) otherwise tarnishes this mark. 35 U. S. C. section 1125(c).

[4] 15 U.S.C. section 1117(a) also refers explicitly to section 1125(a) which reads in relevant part: (1) Any person who uses in commerce any word, term.  .   . (A) likely to cause confusion .  .  .  (B).  .   . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”


Thryv is thriving! Thryv v. Click to-Call Technologies, LP

April 23, 2020

The United States Supreme Court [hereinafter ‘the Court’] recently held that timeliness of initial petitions under the inter partes review provisions [hereinafter IPR][1] of the America Invents Act cannot be appealed to a judicial court. Thryv, Inc. v. Click-to-Call Technologies, LP. et al., 590 U.S. ___ (2020)[hereinafter ‘Thryv’ and ‘Click-to-Call’]. In so holding the Court emphasized that one purpose of IPR is a more cost-effective alternative to conventional litigation, and to allow appeals of a decision to  commence an IPR would jeopardize this purpose.

This case began when the United States Patent Trial and Appeal Board [hereinafter ‘the Board’] commenced an IPR where Thryv challenged Click-to-Call’s patent. Although Click-to-Call maintained that Thryv filed its petition after the statutory deadline, the Board proceeded and ultimately cancelled thirteen of Click to-Call’s claim sentences.[2] Click-to-Call appealed to the United States Court of Appeals for the Federal Circuit [hereinafter ‘Federal Circuit’] which, after a previous remand, treated the timeliness issue as judicially reviewable. The Federal Circuit then concluded that the petition was untimely, vacated the Board’s decision and remanded for dismissal of the IPR.

Before the Court, Thryv contended that the text of  35 U.S.C. section 314(d)[3], as well as Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___, 136 S. Ct. 2131 (2016),[4] confirms that the Board’s decision whether  to commence an IPR,  and even for reasons arising under other statute provisions, is final and non-reviewable.  According to Cuozzo, in this instance the question of untimeliness was closely tied to the application and statutes related to the “institutional decision;” consequently the Board’s decision to commence IPR was non-reviewable. In contrast, Click-to-Call maintained that appeal of an IPR commencement is prohibited under section 314(d) only where the question is whether a petitioner has a reasonable chance to prevail under section 314(a).[5] Click-to-Call also contended that the text of section 314(d) supports its position, because this text refers to “this section” and “this section” refers exclusively to section 314.

The Court vacated and remanded this case to the Federal Circuit. In so doing, the Court stated that  section 314(d) prevents an appeal of timeliness under section 315(b), and in a manner similar to Cuozzo which also addressed application of a statute other than section 314(a). The Court also stated that  section 314(d) does not limit the appeal bar to section 314(a), because Congress would have used language such as ‘reviewable under section 314(a)’ instead of ‘this section.’ Furthermore, it is clear that Congress drafted the IPR statute to entrust the decision whether to commence an IPR to the patent office. This result is distinguishable from that of SAS Institute, Inc. v. Iancu, 584 U.S. ___,128 S. Ct. 1348 (2018), because SAS Institute addresses judicial review of IPR proceedings, and not whether IPR should have commenced in the first instance.

[1] An inter partes review is an administrative process by which a patent challenger asks the U.S. Patent and Trademark Office [hereinafter ‘patent office’] to reconsider the validity of a patent.  The patent office must first agree to institute review after the patent challenger submits a petition.

[2] Claims comprise sentences at the end of a patent which designate the subject matter to be protected, and they do so in varying degrees of specificity.

[3] 35 U.S.C. section 314(d) reads in relevant part that the patent office’s “determination… whether to institute an inter partes review under this section shall be final and non-appealable.”

[4] In Cuozzo, a party contended that the Board should have refused to institute IPR, because the opposing party’s petition did not meet section 312(a)(3) requirement for patent challenges be identified with particularity. The Court disagreed and held that section 314(d) was sufficiently clear to overcome the “strong presumption in favor of judicial review” quoting Mach Mining, LLC. v EEOC, 575 U.S. 480, 486 (2015).

[5] Section 314(a) reads in relevant part that” The Director may not authorize an inter partes review …unless… there is a reasonable likelihood that the petitioner would prevail.”


BOOK OF (GENERIC?) BUSINESS: USPTO v. Booking.com

April 20, 2020

The U. S. Supreme Court [hereinafter ‘the Court’] will soon resolve whether an undisputedly generic term, combined with a domain name locator, is entitled to trademark protection in the United States.  United States Patent & Trademark Office v. Booking.com B.V., _____ U. S. ___ cert. granted Docket No. 19-46 (2020) [hereinafter ‘PTO’ and ‘Booking.com’].  Under current PTO guidelines, a generic term combined with a domain name locator is never protectable as a trademark or service mark because the locator, such as .com, merely designates an internet address.

When Booking.com originally applied for federal trademark registration, the examiner denied registration for the term ‘Booking.com’ because this term is generic.  The trademark appellate court affirmed, and so Booking.com challenged this decision in federal district court. In contrast to the trademark tribunal, the court found that Booking.com was descriptive, not generic, had acquired secondary meaning,[1] and the Fourth Circuit affirmed the district court.

Now before the Court, the PTO relies upon Goodyear India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888) to oppose trademark registration of Booking.com. In Goodyear, the Court held that addition of a business designation such as ‘Company’ or ‘Inc.,’ when combined with the generic word for an actual product or service, does not create a protectable mark. According to the PTO, this decision is dispositive because a domain locator such as .com is completely analogous to a business entity designation. As such, recombination of a domain locator and a generic term such as ‘booking’ does not create a non-generic term.

The PTO further contends that reliance upon Booking.com’s survey evidence is wrong, because consumer recognition cannot turn a generic mark into a protectable mark. Otherwise, a party could register a specific generic term plus a domain locator, because this party invested significantly in advertising and promotion. This monopoly on a generic term would be an unfair advantage over business competitors who then could not use this generic term to describe their own products and services.

Booking.com maintains that Goodyear is not dispositive because it is superseded by the Lantham Act, because the Lantham Act incorporates a ‘primary significance test’ to determine whether a term is generic. Under this test if consumers associate a term with a specific source, and do not merely recognize the term for a general class of goods or services, then the term is descriptive and not generic. If the term is descriptive then it may be registered if there is evidence of secondary meaning, and which is provided the survey in this case. According to Booking.com, these particular surveys have been recognized as the standard for determining consumer preferences and were properly considered strong evidence in this case for trademark protection. [2]

Oral argument is scheduled in May 2020.

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

[1] Under U.S. trademark law, a descriptive mark may obtain protection if there is evidence that consumers recognize that this   mark designates a source of goods and/or services. This recognition is known as secondary meaning and a descriptive mark describes a characteristic(s) of those goods and/or services.

 

[2] Booking.com also does not accept that the law of unfair competition is a commercially satisfactory alternative, because unfair competition law does not provide the substantial benefits of trademark and service mark protection.

 


Declarations of Independence? Google v. Oracle

April 13, 2020

In Google, LLC v. Oracle America, Inc., ___ U.S. ___ (2020), cert. granted Docket No. 18-956 (Nov. 15, 2019), the United States Supreme Court [hereinafter the Court] will resolve two commercially important questions. The first question is whether instructional source code known as declarations, as well as the organization of a computerized platform, in and of themselves are entitled to copyright protection. If they are so entitled, then the next question becomes whether copying of these features from the entire platform qualifies as fair use.[1] It is undisputed that Google copied declarations and organization of Oracle’s JAVA SE computer code into its own Android computer programs without a license.  Since then Android has become a commercially successful application in mobile phones.

In Oracle’s copyright infringement lawsuit, and after a remand from the Federal Circuit Court of Appeals [hereinafter ‘Federal Circuit’] the jury found that that there was fair use of Oracle’s declarations and computerized code organization. However, upon a second appeal the Federal Circuit reversed and concluded that there was no fair use as a matter of law, in large part because Google used these JAVA SE features for a commercial purpose in Oracle’s markets.

Now before the Court, Google provides several reasons why each of Oracle’s declarations and JAVA SE organization by themselves do not qualify for copyright protection. In part, Google contends that the declarations are merely “rote” instructions analogous to a short word or phrase in English, and therefore not copyright eligible. Google also contends that there is only one manner in which to write each declaration for a particular computerized function. Consequently, and as a matter of law, the tangible expression, i.e., Oracle’s declaration code, merges with the computer program function and does not qualify for copyright protection. Google also contended that the declarations comprised methods of operation and therefore were not eligible for protection under the copyright statute.

As for fair use, Google contends that the proper question is whether its new work transformed use of Oracle’s code, and that it did so because it became part of an entire new work, i.e., Android. Google further contends that it used only a small portion of Oracle’s work and created significantly more of its own new code for Android.

In part, Oracle’s copyright eligibility position is that there is no merger because the original authors selected from unlimited creative choices for (i) writing declaration code and (ii) organizing JAVA SE.  Furthermore, Google’s characterization of declarations as unprotected functional methods of operation is misplaced, because (i) the Copyright Act protects all computer code without exception, and (ii) even though computer code is always functional.  As to fair use because Google used Oracle’s declarations and JAVA SE organization to create a commercial superseding use in Oracle’s markets then this defense fails.  Oracle further observed that the amount of code Google copied is irrelevant, because this particular code was critical to Android’s success, and it was not merely a selection of trivial code without expressive value. Also significant is that Oracle found Google’s use non-transformative, because the copied code became part of Google’s Android product with the same purpose as in JAVA SE and with no modifications to the copied code.

Stay tuned for oral argument and the  Supreme Court decision!

[1] Fair use of a portion of an author’s original work comprises a defense to copyright infringement, and fair use generally applies to research or satirical works. One factor against finding fair use is whether a portion of a work is used for the copier’s commercial purpose in the original author’s or owner’s market.