Free speech in the trademark office: Matal v. Tam

June 29, 2017

This past term the U.S. Supreme Court [hereinafter the Court] held that the disparagement clause in the U.S. federal trademark statute [the Latham Act at 15 U.S.C. 1052(a)] is facially unconstitutional, because it abridges the free speech clause of the First Amendment. This challenged clause of the statute states in relevant part that trademarks and service marks [hereinafter marks] are not be eligible for federal registration if they disparage, or otherwise hold in contempt, persons, institutions or beliefs.  Federal registration is a process by which the U.S. trademark office evaluates submitted marks, in part based upon their use and legal sufficiency. If a mark qualifies for federal registration, then the mark owner obtains significantly more legal rights than owners of unregistered marks.

Mr. Simon Tam applied to federally register the logo THE SLANTS as a service mark associated with live performances by his band. The trademark examiner refused registration because the logo is disparaging to persons of Asian ancestry, and the Trademark Trial & Appeal Board affirmed this basis. However, the Court of Appeals for the Federal Circuit Court en banc reversed the Trademark Trial & Appeal Board and held that section 1052(a) is facially unconstitutional because (i) it penalizes speech of which the government disapproves, and (ii)under a strict scrutiny standard for viewpoint based restrictions upon speech, it penalizes mark owners without a compelling government interest. The trademark office’s petition for a writ of certiorari was subsequently granted.

Before the Court Mr. Tam asserted in relevant part that the disparagement clause is impermissibly vague with no clear boundary for the term ‘disparages.’ Secondly, he asserted the statute imposes a significant burden upon speech with a particular content, because it deprives mark owners of important rights only available through federal mark registration. Thirdly, when a statute distinguishes speech, such as marks, based upon viewpoint and content there must be a compelling state interest for either private or commercial speech. The trademark office’s position in relevant part was that the disparagement clause does not penalize unpopular speech: Instead the clause (i) prevents the government from affirmatively assisting owners of marks which belittle a person or persons, and (ii) otherwise provides participation criteria for a government sponsored activity. It also asserted that even if the marks by themselves are purely private speech, they do not retain that status after federal register approval. The trademark office further asserted that there is no constitutional right to affirmative assistance from the government for promotion of private speech.

The Court held that the disparagement clause facially violates constitutional free speech protection and provided several reasons in support of this holding. First, it stated in relevant part that trademarks and services are private speech, and government may only regulate private speech if (i) there is a substantial government interest (ii) narrowly drawn to that interest.  Because the government restriction is viewpoint based, then the restriction also requires heightened judicial scrutiny. The Court concluded there was no compelling or legitimate reason for the disparagement clause’s viewpoint based restriction, and that there is no such interest even if Mr. Tam’s mark is commercial speech. The Court also stated that even if viewpoint based regulation was appropriate, the disparagement clause is not sufficiently narrow in scope to exclusively eliminate marks that denigrate ethnic, racial and religious groups.  For example, by its terms the clause forbids parodies of public figures, celebrities and institutions, but courts have consistently found these activities protected from viewpoint based restrictions. However, the Court did not suggest that the disparagement clause might become constitutional with an amendment that results in a narrower scope of viewpoint restricted private speech.


© 2017 Adrienne B. Naumann, all rights reserved.

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Less is more: Samsung v. Apple

February 19, 2017

With numerous intellectual property cases pending before the United States Supreme Court this term, the earliest decision to issue in 2016 is Samsung Electronics Co., Lt. et al. v. Apple Inc., 580 U.S. ___ (2016) [hereinafter ‘the Court’] [ hereinafter Samsung and Apple]. The decision resolved whether a component of a product is an article of manufacture when calculating damages for infringement of a U.S. design patent. If a person manufactures or sells a manufactured article displaying a patented design or similar design without the patent owner’s consent, then that person is liable to the patent holder for the infringer’s total profit. 35 U.S.C. section 289. Samsung’s position was that damages for its infringement of Apple’s product should only include the component that was actually copied, and thereby reduce the trial court’s award to Apple. The Supreme Court agreed and held that for a multicomponent product the relevant article of manufacture maybe only a component of that product.

Prior to this litigation Apple obtained several U.S. design patents for iPhones that were initially released in 2007. Subsequently Samsung sold a series of smartphones that resembled Apple’s iPhone. Apple then sued Samsung for infringement of its design patents and the trial court awarded Apple damages of $399 million for infringement. The Federal Circuit Court of Appeals affirmed this award for the entire profit Samsung acquired from its sales of infringing smartphones. In reaching its conclusion the Federal Circuit reasoned that the interior components of Samsung’s smartphones were not sold separately from the phone exterior surface that displayed an infringing design.

The Court resolved the threshold legal question of whether an article manufacture (i) must also be the entire end product sold to consumer, or (ii) may comprise only a single component of that product. The Court looked to section 289 and concluded that its term ‘article of manufacture‘ is sufficiently broad to include a product component, in part because the component is created by hand or machine. The Court also observed that section 289 does not explicitly limit design infringement damages exclusively to complete articles or to articles as sold. The Court further relied upon 35 U.S.C. section 101 that defines a new and useful manufacture as patent eligible and which is interpreted to include parts of a machine separate from the totally assembled machine. The Court concluded that there was no legislative history or statutory text to support the Federal Circuit’s conclusion that section 289 solely addresses damages for sales of a complete end product.

The Court declined to identify the relevant component of Samsung’s infringing smartphones or provide a test for designating the relevant article of manufacture. Instead, it reversed the Federal Circuit’s holding and remanded the case to the Federal Circuit to address this test along with any remaining issues. On February 7, 2017 the Federal Circuit remanded the case to the federal district court to determine whether additional proceedings are necessary. If such proceedings are warranted the trial cour0000000000l may present a test for identifying the relevant article of manufacture under section 289.

© 2017 Adrienne B. Naumann
All rights reserved.
Ms. Naumann does not sponsor or endorse the advertisements at

Be afraid…be very afraid: inter partes and post-grant review

December 31, 2016

There are now two permanent sheriffs in the United States patent office to eliminate or reduce your patent protection: The post-grant review and inter partes review of the America Invents Act.  With both proceedings patent claim sentences can be cancelled under a significantly lower evidentiary standard and broader claim interpretation that those required for invalidating patents in courts.


For post-grant review a party generally files a petition to cancel a patent’s claims no later than nine months after the patent’s issue date. 35 U.S.C. section 321(c).   The petition may rely upon statutory reasons for invalidity as well as novel related issues. 35 U.S.C. 282(b)(2)(3), 321(b) and 324(b).   The petition may also include expert testimony, and the patent owner may respond in kind. 35 U.S.C.  322(a)(3)(B) and 323; 37 C.F.R. 42.208(c).  If the Patent Office Trial and Appeal Board [hereinafter the Board] then determines that the petitioner is likely to prevail, the parties proceed to an adjudicatory phase. 35 U.S.C. 324(a). This Board decision to either dismiss the petition or proceed is final and nonappealable. 35 U.S.C. 324(e). If the proceeding continues there is limited discovery, the patent owner may amend claims and there is another opportunity to submit expert testimony. 35 U.S.C. 326 (a)(5), 326(a)(8) and 326(d).  With a limited exception, claims must be given their broadest reasonable interpretation instead of the narrower plain and ordinary meaning of infringement litigation. See 37 CFR 42.200(b).  The petitioner must establish by a preponderance of the evidence, and not clear and convincing evidence, that claim sentences are invalid for reason(s) provided in 35 U.S.C. 282(b)(2)(3).  See 35 U.S.C. 326(e). The Board issues a final written decision on the merits and the parties may appeal this decision. 35 U.S.C. 328(a) and 329.


Inter partes review is similar to post-grant review and includes broader claim construction, no appeal of the initial Board decision to proceed, and a lower evidentiary standard. See 35 U.S.C. 311 et seq.; 37 C.F.R. 42.100(b).  However, for an inter parts review (i) generally the petition must be filed no sooner than nine months after a patent issues and (ii) claim sentences may be canceled only for anticipation or obviousness based upon printed publications or patents. 35 U.S.C. 311(b) and 311(c). The post-grant proceeding thereby provides a short deadline by which a newly issued patent may be challenged for almost any reason, and thereafter this patent may only be challenged on a limited basis in an inter partes review.


Inter parts review was recently challenged in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___ (2016) [hereinafter Cuozzo]. The Cuozzo petitioner challenged the ‘broadest reasonable interpretation’ standard, in part by contending that this standard produces outcome inconsistent with the ‘plain and ordinary meaning’ standard of patent infringement litigation.  See 37 C.F.R. 42.100(b). This petitioner also challenged the Federal Circuit’s holding that a Board’s decision to institute a proceeding is judicially unreviewable. However, the Court concluded that selection of the ‘broadest reasonable construction’ standard was a reasonable exercise of rulemaking power under the statute’s enablement provision. See 35 U.S.C. 316(a). The Court also concluded that judicial review of initial Board decisions would undercut the patent office’s ability to eliminate defective patents.  The Court did add that judicial review could be revisited if based upon constitutional challenges or other questions outside the scope of actual post-grant and inter partes review provisions. To date in the Court has denied petitions for certiorari challenging the post grant statute and its regulations.

© 2016 Adrienne B. Naumann

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Reversal of fortune? public performance rights

March 26, 2014

There is currently a war between (i) internet broadcast stations that do not pay licensing fees for their transmitted programs and (ii) the program copyright owners. This conflict will soon be resolved when the U.S. Supreme Court interprets U.S. copyright law for a Second Circuit decision. In the meantime there is disagreement in the federal courts on whether certain technology for transmittal of unlicensed media violates exclusive public performance rights.

The case before the Supreme Court is American Broadcasting Co. et al [ABC] v. Aereo et al. [Aereo]. Aereo is a service that transmits broadcast television programs over the internet for a monthly subscription fee to its customers. Aereo’s antennas and remote hard drive create individual copies of each program which are then broadcast to customers. Consequently, Aereo’s technical systems provide the ability to view live television, pause/ record live television, and view of recorded programming with internet connected mobile devices. To implement this service, Aero owns antennae boards with thousands of individual antennas. The feed from a single antenna creates a copy of a specific program which is then transmitted to a requesting customer. No two users share the same single antenna simultaneously, even if more than one customer simultaneously watches or records the same program. Furthermore, a separate copy of a single program is created for each customer, and this copy is only accessible by that customer.

WNET, a party to the litigation, originally requested a preliminary injunction against Aereo’s internet broadcasts of its copyrighted works based upon infringement theories, especially the right to publicly perform (transmit) the works. The lower court denied the preliminary injunction, so WNET and other copyright owners filed an immediate appeal to the appellate court. The appellate court reviewed the factors for granting a preliminary injunction, based upon the alleged infringement of WNET’s public performance right under the U.S. Copyright Act. The court addressed the definition of ‘transmittal’ and concluded that it had previously resolved the public performance issue under the transmission provision in the Act. Under this previous interpretation the correct inquiry is whether (i) a transmission (ii) sent exclusively to a single person(iii) constitutes a public performance. The answer was no, because the potential audience of each transmission is a single user. Consequently, the appellate court affirmed the denial of a preliminary injunction, because there was no copyright infringement, and therefore WNET would not succeed on the merits of its lawsuit.

The copyright holder of the programs maintain that the underlying copyrighted WORK, and not the nature of the TRANSMISSION, is the basis on which public performance is resolved. Consequently, if Aereo creates more than one copy of the underlying work (in this case a program) then the electronic program is publicly performed and infringes WNET’s copyright in the program. According to this view, that each customer has a unique single copy is irrelevant, because the court properly looks at (i) a collection of unauthorized copies and (ii) not the manner in which they are sent to customers electronically. The underlying work approach has gained substantial judicial support outside the Second Circuit. For example, in Fox Television Stations, Inc. et al v. FilmOn X LLC a federal judge from the District of Columbia embraced the underlying work interpretation. She then granted a preliminary injunction against FilmOn X, a business that operates in a manner virtually identical to Aereo. Similarly, a California federal district has also adopted the underlying work interpretation against FilmOn X. The Ninth Circuit has postponed a decision on FilmOn X’s appeal from the California decision until the Supreme Court has the final say.

Who’s sorry now? copyright safe harbor

February 23, 2014

A recent appellate decision addresses circumstances that YouTube and Google initially perceived as small missteps in Viacom International, Inc. et al v. YouTube, Inc. and Google Inc, et al [hereinafter “Viacom” and “YouTube”]. The facts of this case are as follows. As is generally known, YouTube allows users to upload and view video clips free of charge to its website. However, the YouTube participant must agree not to submit works which the owners of works with copyright did not authorize.

Viacom’s position was that YouTube and Google were actually aware of specific infringing works on their website. To establish this knowledge, Viacom relied upon several documents that it obtained from YouTube. For example, a series of e-mails from one founder/executive of YouTube to another requested that infringing footage from prominent football associations be removed from the YouTube website. Nevertheless, the infringing material allegedly remained on the site. Viacom also relied upon another report from one YouTube founder to another founder that stated in relevant part: “We would benefit from pre-emptively removing content that is blatantly illegal and likely to attract criticism.” However, YouTube did no remove this content from the website on the premise that it would conduct a more thorough infringement analysis in the future. Unfortunately, this decision exposed YouTube to infringement liability in the interim.

According to additional documents, a YouTube founder requested that the remaining two founders remove several Bud Light commercials that were posted without authorization from the copyright owners. However YouTube ultimately left these commercials posted on the YouTube website for at least an additional week which “can’t hurt.” In still another instance, YouTube reposted a space shuttle clip for which Turner Media owned the copyright. YouTube then decided that this space shuttle clip was of such popular interest that YouTube would remove it only when it had optimally benefited from the clip’s popularity and when You Tube was “better known.”

The appellate court concluded that only actual knowledge or awareness of specific instances of infringement will disqualify a service provider from the statutory safe harbor for copyright infringement liability. The federal appeals court also concluded that the United States Safe Harbor of the Digital Millenium Act requires that an internet service provider have actual knowledge or awareness of a specific infringing activity. The court then directed the lower court to determine whether these documents of the YouTube founders sufficiently evidenced that YouTube had actual knowledge or awareness of specific infringing material posted on their site. If so, then You Tube is liable for copyright infringement under the copyright statute.

One important lesson from this case is that is no such thing as “leaving it up for a while” on the mistaken belief that owners will ignore that works with copyright are posted without their authorization. Unfortunately, most businesses do not have the financial resources for this litigation, much less to pay damages for missteps similar to those of YouTube. Consequently, it is important for businesses and organizations with interactive websites to be extremely vigilant so unauthorized works are not posted in the first instance. If they are inadvertently posted and there is a complaint, then they should immediately be removed from the site pending a thorough investigation. For entities such as alumni organization interactive websites, posts from outside the university are ill-advised unless a knowledgeable person (i) continuously monitors the website; (ii) consistently screens all potential posted content; and (iii) immediately removes posted content upon receiving a complaint which initially appears legitimate.

©2014 Adrienne B. Naumann, Esq.
Ms. Naumann does not endorse, sponsor or post the advertisements at

Bummer! visual art fair use

February 3, 2014

In the U.S. world of copyright fair use, it is often difficult to predict how use of another’s work may haunt a client who incorporates that work without permission from the copyright owner. Without a doubt, the best practice is to remain abreast of court cases, especially for literary and visual arts, in all the federal appellate courts. One such case is Cariou v. Richard Prince et al [hereinafter ‘Cariou’ and ‘Prince’] in which the court concluded there was fair use of numerous copyrighted visual art works in their entirety.

As discussed in my previous articles, copyright fair use is not defined in the same manner as trademark and service mark fair use under U.S. federal law. There are several criteria in copyright law for determining whether unauthorized use of another’s works is properly characterized as fair use. One criterion is whether the unauthorized person’s contribution is sufficiently transformative of the original works that are incorporated. According to the law, to be sufficiently transformative this contribution must alter the expression, meaning or message of the original incorporated work.

In the current case, Cariou created numerous photographs of a tribe relatively isolated from western influences. He then published these photographs in a book which, however, did not enjoy a wide distribution. Thereafter Prince painted over Cariou’s photographs and produced numerous collages upon each painted over photograph. Prince then publicly displayed these collages exclusively as his own works. When Cariou sued for copyright infringement, Prince replied that his inclusion of the photographs was fair use. Because the photographs within Prince’s works were substantially altered and almost unrecognizable, the court concluded that most of the thirty contested photographs were sufficiently transformed to qualify as fair use. The court also found sufficient transformation, in part because Prince’s collages were provocative while the original photographs were serene portraits and landscapes.

The court next addressed whether the Prince’s works had a commercial or non-profit purpose. The court concluded that although Prince’s works were commercial, this factor was insignificant in view of the transformative nature of Prince’s visual art contributions to Cariou’s photographs. The court then addressed the effect of Prince’s collages upon the market for Cariou’s photographs. The court stated that whether Cariou’s photograph market was usurped depended upon (i) Prince’s target audiences (ii) the nature of Prince’s professional contacts and (iii) whether these persons were the same as those for Cariou’s original photographs. The court found no evidence that Cariou ever developed a market, use, license or secondary uses for his photographs that were similar to those of Prince. The court also concluded that the commercial success and distribution of Prince’s works depended upon an entirely different kind of collector from those of Cariou.

Finally, the court addressed the nature of the copyrighted work. The court observed that visual art works that are published, such as Cariou’s, are less vulnerable to the fair use defense of an unauthorized user. Nevertheless, the court concluded that although Cariou’s work was published and creative, this fact was of limited importance because of the strong transformative element in Prince’s collages. Finally, the court considered the amount and substantive nature of Cariou’s photographs that were used in relation to Cariou’s copyrighted photographs as a whole. On this point the court concluded that in twenty of his works, Prince added sufficiently creative and original content to the photographs so it did not matter that he incorporated an entire photograph into each collage.

© 2014 Adrienne B. Naumann
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Gimme what ya got: patent infringement fees

January 26, 2014

In my last article I addressed a U.S. Congressional bill which would significantly change fee-shifting when a party brings a lawsuit for patent infringement. In partpiciular this legislation would broaden the circumstances under which a judge could award attorney fees to a party exonerated of patent infringement.

There are currently court rules and statutes for awarding attorney fees and/or costs in patent infringement cases to the accused infringer thereafter exonerated. For example  there are potential financial sanctions for (i) bringing a frivolous lawsuit (ii) vexatious conduct during the litigation and (iii) willful infringement and/or fraud in obtaining the patent. Moreover, recently in Kilopass Technology Inc. v. Sidense Corporation [hereinafter Kilopass and Sidense], the federal appeals court broadened the circumstances under which a judge may award attorney fees for an ‘exceptional case’ involving patent infringement.

Kilopass and Sidense are competitors in the memory markets, i.e., a market in which devices retain information after power to the device is removed. After Kilopass observed a Sidense patent application on-line, it retained a law firm to determine whether Sidense’s disclosed invention infringed Kilopass’ patented memory device. The first law firm required additional time for a final determination, as did the second firm Kilopass subsequently contacted. Kilopass then retained a third firm which determined that Sidense may infringe but it had not yet completed the investigation. Nevertheless, Kilopass immediately filed the patent infringement lawsuit against Sidense prior to this final determination. Sidense was subsequently exonerated and thereby became the prevailing party. However, the trial court did not award fees  to Sidense, apparently because there was no evidence that Kilopass actually knew that its  infringement claims were baseless.

To obtain fees under the patent statute, there must be both subjective and objective bad faith by the party that filed the patent infringement lawsuit (generally the patent owner). On appeal Sidense contended that the trial judge should have awarded attorney fees because the case was (i) brought in subjective bad faith and (ii) objectively baseless. The appeals court agreed that the trial judge did not permit a sufficiently wide scope of evidence to establish these two requirements. The court further concluded that contrary to the trial court’s position, subjective bad faith can be established by evidence of (i) reckless conduct (ii) under a totality of the circumstances. Furthermore, a patent owner’s misguided belief is not sufficient by itself to overcome a conclusion of subjective bad faith in view of objective evidence.

The appeals court then ordered the trial court to re-evaluate whether fees from Kilopass to Sidense are appropriate (i) using the correct legal standards under the totality of circumstances criterion and (ii) to include objective evidence of merits of the litigation to establish subjective bad faith of the patent owner. The court emphasized that there was no intent to (i) discourage filing of meritorious patent infringement lawsuits and (ii) even if a patent owner had a weak case, then attorney fees on that basis alone are inappropriate. However, the court did question whether the subjective bad faith requirement was necessary under the patent statute attorney fee award provision.

On a final note, one may query whether the pending Congressional bill is necessary when judicial remedies, such as those of this appellate decision,  increase the possibility of financial sanctions.
©2014 Adrienne B. Naumann
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