Intellectual Property Archives - Page 10 of 58

The Do’s and Don’ts of Videoconference Oral Proceedings

As many will be aware, there is a challenge to the legality of videoconference Oral Proceedings pending at the EPO’s Enlarged Board of Appeal (G 1/21).^[1] In particular, the Enlarged Board has been asked to consider whether such proceedings can go ahead if the parties do not consent to use of the videoconference format. Although the question referred to the Board encompassed Examination, Opposition and Appeal proceedings, the EPO has decided to continue with videoconference Oral Proceedings for both Examination and Opposition matters irrespective of whether or not the parties involved consent to do so.^[2]

A Decision from the Enlarged Board is expected to issue relatively quickly, but unlike most referrals to be Enlarged Board, there does not appear to be much confusion about the direction the EPO will take. The EPO is generally keen to embrace the digital format and recent case law from the Boards of Appeal seems to suggest that the EPO will continue with videoconference Oral Proceedings as the “new normal”.^[3]In anticipation that the Enlarged Board agrees, we have compiled our top tips for videoconference Oral Proceedings.

DO ask for a test call. Even though we are all now familiar with the format, a test call is a good opportunity to confirm that the audio is clear, and the video is working correctly. The test call will also allow you to practice screen sharing and joining/leaving breakout rooms. Test calls need to be requested at least six weeks in advance of the hearing, as only limited time slots are available.

DON’T assume your laptop speaker and camera will be adequate. If translators are involved, the EPO requires participants to have a headset, and even an inexpensive microphone can be a significant improvement to the in-built one found on most laptops. If the proceedings use Zoom, check in advance that your screen name is appropriate, the brightness settings are adequate for where you plan to sit, and check that any filters/backgrounds are turned off.

DO have your ID ready. It’s easy to forget when the only travel involved is into your home office, but it will speed up proceedings on the day.

DON’T assume things will be the same as an “in-person” hearing. Videoconference Oral Proceedings do generally seem to take a little longer than in person hearings, and some nuances of body language can be lost. How you communicate with your team during the hearing will also be different if you are in separate locations. Have you thought about a virtual alternative to passing notes during the hearing?

DO ask for breaks if needed. Everyone now recognizes that screen fatigue can be a problem. Chances are that if you need a break, someone else in the proceedings will be glad you asked.

DON’T put up with technical issues. If you can’t hear or see the proceedings adequately, the EPO advises that you attract the attention of the chair by waving. Proceedings will then be paused while the technical issues are resolved.

DO have a backup plan in case of a loss of connectivity. The EPO will ask for a telephone number, but it is worth seeing if you could use a WiFi hotspot (e.g., from a mobile phone) if the internet connection drops.

DO think about how you will prepare and submit any amendments on the day. If you are the Applicant or Patentee, there is a chance your case may be upheld on the basis of amended claims, and therefore an amended description could be required. The amended description pages need to be signed and sent to the EPO in an EPO-compatible pdf format. Since most of us do not have printer/scanners at home, it is worth thinking in advance about how to do this.

Finally, DO remember that, everyone is in the same situation, with the same fears that the internet connection will drop at a critical time, the neighbors will choose that day to begin renovation work, or that a cat filter will appear out of nowhere.^[4] Consequently, we have found the EPO to be understanding of any technical concerns and ready to work with us to resolve these.

^[1] https://www.epo.org/law-practice/case-law-appeals/eba/pending.html

^[2] https://www.epo.org/news-events/news/2021/20210324a.html

^[3]https://www.epo.org/law-practice/case-law-appeals/recent/t162320eu1.html

^[4] https://www.theguardian.com/us-news/2021/feb/09/texas-lawyer-zoom-cat-fi…

ARTICLE BY K. Victoria Barker, Ph.D. of Maeve O’Flynn of Finnegan

For more articles on virtual proceedings, visit the NLR Litigation / Trial Practice section.

Teaching Tips for IP Trial Lawyers

Imagine this scenario: Your star witness, an expert on the topic of prosthetic device microprocessors, has been on the stand for an hour discussing the history of prostheses, the nature of integrated circuits, and the two-part test for determining actual controversy. Thus far, he has relayed his testimony calmly and thoroughly. You are so pleased with his performance, your confidence concerning the trial outcome is beginning to swell. When you look over at the jurors, however, your optimism is dashed. One juror is rubbing her temples. Another has departed into a daze. And several others are grimacing. “Why aren’t they paying attention?” you wonder.

In response to being slapped with too much complex information, your jurors are showing signs of anxiety. When information overwhelms them, jurors exhibit a panoply of physical and mental responses. They might, for instance, shrink back in their seats, slump their shoulders, roll their eyes, and sigh loudly. They may feel insecure, frustrated, and even angry. Were it not unseemly courtroom behavior, jurors (and even judges) would audibly groan, “ugh.”

If you are a trial lawyer who specializes in intellectual property cases, you have probably observed these sorts of responses. Jurors often do not understand the technology that is at issue in the case. Many of them possess little inkling about the workings of trademarks, patents, or copyrights. They understand they have a duty to reach conclusions based on evidence, but that obligation becomes impossible to fulfill when they find the evidence incomprehensible.

If you spot jurors exhibiting these signs of anxiety during trial, your IP case is in danger. Their responses indicate they have stopped listening to your argument, and thus, you have lost out on an opportunity to gain support for your client. Even if you eventually rouse these jurors back to attentiveness, the likelihood that they will side with your client has been diminished.

That is the bad news. The good news is, you can present complex material to jurors without triggering their malaise. It is not the material that is the problem, it is the teaching methods you and your witnesses are employing. This article reviews effective teaching techniques you can use in the courtroom. Employing them will make your jurors sit up, lean forward, listen, understand your case, and perhaps even enjoy jury duty.

GETTING JURORS TO “I GET IT”

Good teachers understand how people learn. In order to teach jurors, you must understand that process too. Once these connections are made, people progress to the second stage of learning in which they incrementally add layers of new information to knowledge they already solidly possess.

Here is another way to look at the learning process. It can be likened to plants growing on a garden lattice. The lattice is the solid base that enables plants to grow, just as familiar concepts act as a base that allows new ideas to bud for jurors. Slowly, plants sprout on the lattice, just as new knowledge begins to blossom for jurors. Eventually a garden grows, and for jurors, this garden is your argument. By allowing new information to slowly take root in their psyches, you enable them to eventually see your argument in its entirety. Jurors are then able to use this new information to properly perform their duty to carefully weigh the evidence in the case.

A TEACHER’S TOOLKIT

The most effective classroom teachers use stories, analogies, and visual images to relay information to students. IP trial attorneys should employ these tools as well, and the specifics must be planned out and tested long before a witness takes the stand. Before getting into the nitty gritty of the technology at issue in the case, jurors should be provided the overarching story of the case—who did what to whom, when, and why—and most importantly, jurors should always be provided with the reason why they should care. When the case involves particularly complex topics, analogies that relate to concepts with which jurors are already familiar should, at the outset of the learning process, be used in place of complex case facts. As well, use pictures to help jurors visualize invisible concepts. Interactive tutorials can be particularly helpful since they enable jurors to study images and information at their own pace. When the timing of events at issue in the case are important, timelines should be displayed.

Just as the precise stories, analogies, and visual images teachers use depend on the subject matter they are presenting, the specific tools you will use will depend on the issues in your case.

The best stories, analogies, and visual images will have five characteristics in common.

The Five Key Tools Will:

Use real-world language
Employ familiar concepts and ideas
Leverage memorable imagery
Intrigue the listener
Facilitate incremental or paced learning

HOW STORIES, ANALOGIES, AND PICTURES ENABLE COMPREHENSION TO TAKE FLIGHT

Let us say that you are defending an entrepreneur in a patent infringement case. In order to comprehend the evidence in the case, the jurors need to understand the concept of the enablement requirement for patent applications. Your expert witness might explain that the patent system has three primary disclosure requirements. These requirements consist of enablement, written description, and best mode. The enablement requirement compels the patent applicant to disclose the invention in a manner that allows a person of ordinary skill in the art to make and use the invention without an undue amount of experimentation. She might add that enablement is the only disclosure requirement internationally mandated by the agreement on Trade-Related Aspects of Intellectual Property, or TRIPS.

While there would be nothing inherently faulty about her explanation after hearing it, the jurors would be holding back their “ughs.” They would find the narration boring and barely comprehensible, and they would dread the prospect of spending the next few days sitting through similar testimony.

Now imagine how much more effective the expert would be if she started off discussing humans’ age-old desire to fly. “Every person has longed to fly at some point,” she might say. “Children try to fly off couches, adults dream of flying at night, and the Greek myth of Icarus centers on what happens when the joy of flying overtakes common sense.”

This story is appealing because it uses familiar concepts (Tool 2) and memorable imagery (Tool 3) to hook the audience.

The witness might go on, “People tried for centuries to build contraptions that would enable the dense-boned, unfeathered human mammal to fly. Many people died trying. Even the genius Leonardo da Vinci tried to come up with a flying machine. He eventually ended up declaring, ‘I have wasted my time.’”

By mentioning this famous artist, the expert will have again introduced subject matter with which jurors are familiar (Tool 2). And the fact that he tried yet failed at something will create intrigue (Tool 4) in jurors’ minds.

“None of these inventors could have received a patent under U.S. law,” your expert could explain, “because none of them successfully ‘enabled’ their ideas.” She might add, “In other words, their ideas didn’t work.”

Now she would be using everyday language (Tool 1) to communicate with real-world people.

“But man’s quest for flight finally was achieved, on December 17, 1903,” she could continue, “when brothers Orville and Wilbur Wright built and, yes, successfully flew the first airplane. Unlike everyone before them, these two Ohio bicycle makers successfully ‘enabled’ the idea of a flying machine by making a machine that actually flew. As a result, the US Patent Office granted the Wright brothers a patent to protect their years of hard work from any imitators. ”

(call out) When graphic displays are used, an already-interesting story could become riveting.

Suppose that during the expert’s testimony, jurors are shown how flying inventions evolved throughout the years. The progression and timing of inventions might be portrayed by building, bit by bit, new layers upon old inventions. As the witness talks about early attempts to fly, you might show Leonardo da Vinci’s sketches from the 1400s. You could then show pictures of aircrafts created by later inventors, such as the designs Sir George Cayley created in the early 1800s and the flying machines Claude Givaudan and Louis Bleriot made in the early 1900s.

By creating a graphic that layers crucial information, you will have facilitated paced learning (Tool 5).

The expert’s story might end with a display of the Wright brothers’ patent application and a historical photo of their machine actually taking flight. And just like that, your jurors’ understanding of the concept of enablement will have taken flight as well. They will realize that it was not enough for previous inventors to possess good ideas. Only once the Wright brothers created a machine that could actually fly was their invention enabled. The invention was worthy of a patent because now someone with requisite skill could actually copy and use this invention.

READY FOR TAKE-OFF

Without ever hearing one complex case fact, jurors can come to understand the issues at the crux of your case. Stories, analogies, and visual displays, will keep them interested in your presentations and enable them to painlessly accumulate a sound base of knowledge. With that base in place, they will then be ready to hear about the specific technology and other evidence related to your case. Chances are high, if you are willing to use effective teaching tools, jurors will not only understand your arguments, they will support them.

ARTICLE BY Chris Ritter of IMS ExpertServices

For more articles on IP trials, visit the NLR Intellectual Property section.

Pardon My French: France Wins Trademark Dispute Using Sovereign Immunity

The US Court of Appeals for the Fourth Circuit reversed a district’s court denial of sovereign immunity under the Foreign Sovereign Immunity Act (FSIA) and remanded the case to be dismissed with prejudice, holding that France was immune from a trademark infringement claim in the United States brought by the former owner of the domain name France.com. France.com, Inc. v. The French Republic, Case No. 20-1016 (4th Cir. Mar. 25, 2021) (Motz, J.)

Jean-Noel Frydman and his company France.com, Inc. (collectively, Frydman) purchased and registered the domain name France.com and trademarked the name in the United States and in the European Union. In 2015, the Republic of France (RoF) intervened in an ongoing lawsuit between Frydman and a third party, asserting the exclusive right to the use of the term “France” commercially. The RoF also insisted that the use of “France” by a private enterprise infringed on its sovereignty. The Paris District Court agreed and ordered the transfer of the domain name to the RoF.

Frydman filed suit for trademark infringement, expropriation, cybersquatting and reverse domain name hijacking, and federal unfair competition in a Virginia district court against the RoF. The RoF moved to dismiss the claim based on the FSIA. The district court denied the motion, stating that the FSIA immunity defense would be best raised after discovery. The RoF appealed.

The Fourth Circuit first determined, based on Supreme Court precedent, that sovereign immunity was a threshold question to be addressed “as near to the outset of the case as is reasonably possible” and not to be postponed until after discovery.

The Court next considered whether the RoF was immune to suit. The FSIA provides a presumption of immunity for foreign states that can only be overcome if the complaint provides enough information to satisfy one of the specified exceptions. Frydman argued that the commercial activity and expropriation exceptions applied.

The commercial activity exception removes immunity where a foreign state has commercial activity in, or that has a direct effect in, the United States. Essentially, a court must determine whether the actions of the foreign state are those of a sovereign or those of a private party engaged in commerce. The Fourth Circuit first identified that the actual cause of the injury at issue to Frydman was the French court’s ruling that the domain name belonged to the RoF, and found that all claims of wrongdoing by the RoF flowed form the French court’s decision. Additionally, even if it was solely the transfer of the domain name that harmed Frydman, and not the French court’s judgment, the transfer was still based on the French court’s judgment that provided the basis for RoF to obtain the domain name. Because the cause of action was based on the powers of a sovereign nation (the foreign judgment) and not the actions of a private citizen in commerce, the Fourth Circuit found that the commercial activity exception did not apply.

The Fourth Circuit next rejected Frydman’s assertion of the expropriation exception. This exception applies when property is taken in violation of international law that is present in the United States for commercial activity by a foreign state or owned by a foreign agency. The Court first stated that it is unclear whether French judicial decree would be considered an expropriation under the FSIA. Even if it was, however, Frydman did not identify any international laws that were violated, the Court noted. The Court reasoned that because Frydman invoked the power of the French courts in litigation against a separate party, it gave the RoF the right to intervene in the action and take ownership of the domain.

ARTICLE BY Joshua Revilla of McDermott Will & Emery

For more articles on trademarks, visit the NLR Intellectual Property section.

Supreme Court Finds Google’s Use of Oracle’s Java Code in Android Operating System to Be Fair Use

On April 5, 2021, the Supreme Court of the United States held that Google’s use of certain Java Application Programming Interfaces (API) in its Android operating system was not copyright infringement and instead constituted fair use of Oracle’s Sun Java API because Google used “only what was needed to allow users to put their accrued talents to work in a new and transformative program.” In its decision, the Supreme Court articulated important policy considerations underlying its decision, noting that, “given programmers’ investment in learning the Sun Java API here would risk harm to the public. Given the costs and difficulties of producing alternative APIs with similar appeal to programmers, allowing enforcement here would make of the Sun Java API’s declaring code a lock limiting the future creativity of new programs” and interfere with the basic objectives of copyright law. In sum, the Supreme Court relied on policy considerations relating to the ability of programmers to use existing code to support the interoperability of software, a common practice that many in the industry advocated as a practice necessary to sustain the feasibility of mobile computing.

This case spans nearly a decade of litigation between Oracle and Google. After negotiations broke down between Google and Oracle’s predecessor to license the entire Java platform for development of Google’s Android operating system, Google developed its own platform tailored to be used exclusively with Android smartphone technology. In developing the platform, Google wrote millions of lines of unique code, but also copied 11,500 lines of code from the Java SE API. The API operated to identify and group tasks and to call up prewritten software to carry out those tasks. Google’s own code operated to actually carry out the called-up task. After Oracle acquired the owner of the Java SE API and its corresponding copyrights, Oracle sued Google for copyright infringement.

Importantly, the Supreme Court did not address the question of whether the API was eligible for copyright protection. Instead, for purposes of this case, the Supreme Court assumed the API was copyrightable, and held that Google’s use thereof was a fair use and did not violate copyright law. Writing for the majority, Justice Breyer examined the four guiding principles identified in the Copyright Act’s fair use provision: (1) the nature of the copyrighted work; (2) the purpose and character of the use; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. The Court found that all four factors weighed in favor of fair use.

The Supreme Court defined the nature of the work as a user interface, thus, the API was “inextricably bound up” with an organizational system—which is not copyrightable—and with an implementation system—which is copyrightable (but was not copied in this case). The Court held that overall, the program is further from “the core of copyright” than most computer programs and that this weighed in favor of fair use.

The Supreme Court held that Google’s use of the program was transformative in that its purpose was to create new products through the Android platform. The Court found this use was consistent with the constitutional objective of the Copyright Act to promote creative progress, which also weighed in favor of fair use.

With respect to the amount and substantiality of the portion of code used in relation to the copyrighted work as a whole, the Court did not consider the 11,500 lines of code as a single complete work but rather as a small part of a larger program consisting of several million lines of code—the rest of which Google did not copy. The court found that this factor weighed in favor of fair use.

Finally, in considering the effect of the use on the market, the record showed both that Google’s new smartphone platform was not a market equivalent of Java SE and that Java SE’s copyright holder would benefit from the reimplementation of its user interface into a different market. The Supreme Court held that enforcing copyrights based on the facts in this case would cause “creativity-related harms to the public” favoring fair use.

The Court’s detailed analysis of copyright fair use in the context of software programming provides much-needed clarification for software developers that engage in the common practice of using and reusing interfaces written by others. The Supreme Court, however, left open the question of whether such code is copyrightable as a matter of law. In a scathing dissent, Justice Thomas wrote that this decision “eviscerates copyright” and that the only reason the majority chose not to address the question of copyrightability was “because the majority cannot square its fundamentally flawed fair-use analysis with a finding that declaring code is copyrightable.” Whether such programming code is subject to copyright protection as a matter of law will likely be the subject of future debate and lawsuits alongside the ever-developing landscape of software programming.

2021 Goulston & Storrs PC.

ARTICLE BY Rebecca Harris of Goulston & Storrs

For more articles on Fair Use, visit the NLR Intellectual Property section.

Best Practices for Clearances and Opinions

Last week, Mintz Member Lisa Adams moderated a panel discussion between in-house attorneys that covered best practices for conducting patent clearances and obtaining non-infringement and invalidity opinions. The panel discussion, which was hosted by the Boston Patent Law Association, focused on key practical considerations that ensure product clearances and opinions are used as effective tools in a comprehensive intellectual property protection strategy. Here are some key takeaways from the panel’s conversation:

Start the clearance analysis for a product well in advance of the product launch, and update it throughout the lifecycle of the product

It can be too advantageous to start the process of clearing a product for market as far in advance of the product’s marketplace launch as possible. Taking a proactive approach to product clearance can help avoid the possibility of having to perform a costly product redesign just prior to the product’s launch. An efficient approach to clearing a product may be to perform an initial landscape search to understand the scope of the art in a product’s technical area when the development of the product is in its earliest stages, to monitor the progress of product development and update the search accordingly as additional product details are learned/finalized, and to focus the clearance effort with freedom-to-operate analyses as the product moves closer to launch. The analysis does not end with product launch, but instead updated searching should be performed throughout the lifecycle of the product.

Consider keeping clearance/freedom-to-operate work product and analysis with outside counsel

A paper trail of conversations and assessments on product clearances, landscapes, and freedom-to-operate analyses between employees could become discoverable in litigation, which could be detrimental to your position in the litigation. The likelihood of the content of the analysis becoming inadvertently discoverable can be minimized by outsourcing the clearance work to outside counsel and having outside counsel maintain and manage the analysis.

Consider varying the approach to clearances based on the circumstances and the value/risk to the business

The decision of whether to commission a detailed and highly documented freedom-to-operate analysis should be based on the consideration of a variety of factors, such as the level of importance of the product, where the product is in the life cycle and the risks in play for the business. While one may consider involving outside counsel if the analysis of whether a product is cleared for launch is complex, it may not be necessary for simpler analyses with fewer issues. In-house counsel can prepare opinions, but it is recommended to have a second in-house attorney review the opinion.

Pay attention to the timing of the opinion you obtain

The timing for delivery of an opinion can be crucial to its effectiveness. For example, if the business is on the eve of product launch or is anticipating litigation, it ideally should be in a position in which outside counsel has studied the relevant patents in detail and provided an opinion well in advance before the launch of a product. It is important that an opinion be delivered such that there is an opportunity to convey that analysis to the decision-makers in the business so that the business has a meaningful opportunity to pull a product from the market based on the opinion if that is the decision that needs to be made. In circumstances where a written opinion cannot be completed in a timely manner, an oral opinion can be rendered in advance of the product launch and subsequently documented in a written opinion after the product launch. Obtaining an opinion on a product or patent as far in advance as practical increases the effectiveness of the opinion (by improving one’s ability to rely on it in any ensuing litigation) and shows objective intent to avoid willful infringement (and treble damages).

Make sure the business is trained to communicate with discovery in mind so they don’t inadvertently undermine clearance/opinion efforts

Communication hygiene is critical. The business should be trained to understand that they should not discuss whether a product potentially infringes a patent or whether it is invalid. To the extent those conversations occur within the business, it is best to avoid having them in writing. In short, if there is a question about a competing product or a patent, it can be helpful to pick up the phone and consult with in-house counsel rather than putting a question in email form to in-house counsel.

Consider splitting up non-infringement and invalidity opinions

To maximize options in litigation, it can be beneficial to split non-infringement and invalidity opinions into separate documents/efforts. Doing so can provide litigation counsel with the ability to rely on one opinion but not necessarily waive privilege for communications associated with the other opinion.

Consider addressing reasonable alternative claim constructions

An opinion of counsel must be competent. When deciding which arguments to include in an opinion, it can be beneficial to address alternative claim constructions. While conclusions reached by counsel do not need to be correct in order to insulate an accused infringer from a finding of willful infringement, it may be more challenging to demonstrate that an opinion is reasonable if it is based on a claim construction that ultimately fails during litigation. While alternative claim constructions are acceptable, unreasonable arguments should not be included in an opinion as they can weaken the opinion by undermining the objective assessment of the reasonableness of the business’s reliance on the opinion.

Carefully consider to whom the opinion should be addressed and how the opinion should be delivered to the business

Ideally, an opinion should be addressed to the in-house patent counsel who requested the opinion and delivered to a key decision maker in the business by the in-house patent counsel. It can be beneficial to document all steps in the delivery and to obtain a form of written record documenting that the decision maker has read and understood the opinion. Such documentation can potentially serve as supporting evidence in any ensuing litigation to support the position that the business did not willfully infringe a patent-in-suit.

ARTICLE BY Lisa Adams and Alexander G. Roan of

Mintz

For more articles on patents, visit the NLR Intellectual Property section.

Beauty and the Little Pig: French Judges Find Jeff Koons Guilty of Copyright Infringement Once Again

The Paris Court of Appeal confirmed a previous decision that found Jeff Koons guilty of copyright infringement for one of his “Banality” sculptures. The Paris Court of Appeal even increased the amount of damages and costs that were initially awarded in the first instance. Beyond the fact that, fortunately, it is quite rare that a famous artist is found guilty of plagiarism, this case is also interesting because Jeff Koons used more or less every defense in the (French) book.

At the end of 2014 and beginning of 2015, the Pompidou Modern Art Museum organized a retrospective of the work of Jeff Koons, which attracted thousands of visitors but gave rise to several lawsuits.

On March 9, 2017, the Paris District Court found that for one of his Banality sculptures, Jeff Koons had reproduced the original features of a French photograph created by Jean François Bauret, which had “saved him creative work.”

The retrospective also prompted another French artist, Franck Davidovici, to sue Jeff Koons personally over an allegedly infringing sculpture. Davidovici also sued Koons’ company, the Pompidou Museum, and Flammarion, a top French publishing house which published a book containing a reproduction of the sculpture in question.

This time, the plaintiff had designed an advert in 1985 for a French fashion company called NAF-NAF. The advert, reproduced below, was published in several well-known magazines, such as “Elle” and “Marie Claire.”

“Naf Naf” is the French name of one of Disney’s Three Little Pigs, the brave and smart one who builds a house with brick and mortar which can resist the wolf’s attack. The title of the advert — “Fait d’hiver” (which means literally “winter event”) — is a play on words since “fait divers” means events, such as accidents, which are reported in local newspapers. The word “winter” also refers to the NAF-NAF autumn-winter collection, which included the jacket worn by the brunette. This photograph is quite striking because the little pig is wearing a small barrel of the type rescue dogs wear.

The Koons sculpture in question was another piece of the Banality series also entitled “Fait d’hiver,” and is reproduced below.

Davidovici claimed that Jeff Koons had violated his moral rights by using the work without his permission and infringed upon his copyright.

Jeff Koons tried almost all defenses that can be raised in this kind of case but none of them was persuasive to the judges and on 8 November 2018 Jeff Koons was found to have infringed Davidovici’s copyright. Jeff Koons appealed but the Paris court of appeal reached the same conclusion and increased the amount of damages and costs awarded.

The Parody Defense: Tried Again, Failed Again

As before the first instance judges, Jeff Koons argued that the sculpture fell within the parody defense.

This defense is set out in the French Intellectual Property Code but is, in fact, the implementation of article 5 §3 (k) of the 2001/29/CE Copyright Directive. The Court quoted a decision rendered by the European Court of Justice that stated that for the exception to apply, the work of art must evoke an existing work but differ notably from that previous work and express humor or mockery.

An example of what would certainly qualify as a parody is the painting by Dali of Mona Lisa with a moustache.

Jeff Koons argued that the humor in his sculpture stemmed from the incongruity of the scene: the woman is lying in the snow, dressed with a sexy fishnet gown and the animal who comes to rescue her was a pig, a farm animal which symbolizes banality. That pig is there to free the young woman from the “fashion diktats” and to free the public from the “good taste diktats” of the so-called “Great Art.”

The Court held that even assuming that the sculpture might be seen as an expression of humor, the advert was not effectively notorious for the sculpture to be regarded as a parody.

The Freedom of Expression Defense: Tried Again, Failed Again

Koons tried once again to rely on freedom of expression as set out in Article 10 of the European Convention of Human Rights but the judges followed the same reasoning as in the Bauret case and also relied on the decision rendered by the European Court of Human Rights in the Ashby Donald case.

Jeff Koons argued that he had added flowers and penguins, which symbolize spring and life, and that his intention was to convey the message that each individual must have faith in his/her own personal tastes. Before the first instance court he had provided as an exhibit a copy of a decision rendered by the U.S. Court of Appeals for the Second Circuit in the Andrea Blanch case in which Koons successfully relied on the “fair use” defense. The French judges could have put this case aside by stating that the “fair use” doctrine simply does not exist under French law but interestingly, they noted that the U.S. case was different in that Koons had not used a substantial part of Blanch’s work. On appeal, the U.S. case was not discussed.

The French judges followed the European case law and stated that they had to balance on the one hand the interests of Davidovoci and on the other hand, Koons’s freedom of expression. Their conclusion was that it was not disproportionate to allow the plaintiff to enforce his rights.

Freedom of expression was therefore not a valid defense in this case.

The Cost of this Banality

A total amount of 207,000 euros had been awarded by the first instance court by way of damages and legal fees and the co-defendants, including the Pompidou Museum, were held jointly liable to pay that amount, which is fairly usual in copyright infringement cases. On appeal, the total amount payable was increased to 344,000 euros, which is quite high according to French standards.

Koons would have been well advised not to appeal but it is harder to predict the outcome of a judicial battle than that of a fairy tale.

ARTICLE BY Catherine Muyl of Squire Patton Boggs (US) LLP

For more articles on copyright infringement, visit the NLR Litigation / Trial Practice section.

Survey Evidence Not Enough to Show Acquired Distinctiveness of Starbuck’s Green Dot on Coffee Cup

In our overstimulated environment with a plethora of brands, names, and marks, it is difficult for products to stand out. Some businesses, however, have managed to break through the noise by creating marks with lasting impressions on consumers. But there are limits, even for the most well-known brands such as Starbucks.

While Starbucks was able to register its recognizable green circle on a white cup of particular size and shape for coffee, tea, and restaurant services (pictured on right), it was not as fortunate with its attempt to register a green circle on a white cup with no identifiable size or shape mark (pictured on left). See In re Starbucks Corporation, Serial Nos. 85792872 (left) and 86689423 (right) (January 17, 2019) (Opinion by Judge Michael B. Adlin).

In rejecting the plain green circle dot mark (left), the Trademark Trial and Appeal Board (TTAB) found the green circle, by itself, did not create a “separate and distinct commercial impression” from the famous siren design. As such, Starbuck’s consumer survey evidence fell short of establishing acquired distinctiveness, raised adequacy concerns, and failed to show that consumers associate the green circle on a cup with Starbucks.

A mark acquires distinctiveness when it is capable of making the relevant public audience associate the mark with its source. The mark gains secondary meaning when the consuming public naturally thinks of the producer and not the product. Usually, consumer surveys are used to measure whether a word, name, symbol, or design is identified by consumers as originating from a single source and to establish secondary meaning, especially with trade dress marks.

In 2012, the evergreen coffee chain, Starbucks, filed two applications with the United States Patent and Trademark Office (USPTO) for the trade dress designs on its coffee cups featuring a green dot. The USPTO rejected both, and Starbucks appealed to the TTAB. In evaluating Starbuck’s consumer surveys upon which Starbucks relied to show acquired distinctiveness of the green circle on a white cup, the TTAB concluded that while the surveys had “some probative value,” their reliability was suspect. According to the TTAB, one of the most important aspects of a secondary meaning survey is to choose an appropriate control stimulus that shares as many characteristics with the experimental stimulus as possible except the characteristic whose influence is being assessed. In its survey, Starbucks tested two white cups with a green dot on the front and used a plain pale blue cup with no other markings as the control. The test cup had no distinguishing features displayed, which most likely led to the respondents’ low rate of identification of a single company. Instead, the control would have more adequately satisfied the standards of a control stimulus if the plain blue cup featured a different shape in a different color, such as a blue triangle.

The control stimulus is important because it not only filters out respondent guessing, but also identifies responses unrelated to the specific mark being tested. The absence of a proper control stimulus was evident in the survey responses identifying Starbucks – the TTAB noted it was not clear why survey respondents identified Starbucks, whether because of the green dot or because “green = Starbucks”, the shape of the cup, how familiar it looked, and the overall popularity of Starbucks. While the rates of association and recognition of the brand name were high, i.e. 65% and 69%, much higher than the minimum 30% required, the Board found this was due to the test cup’s unfamiliar and different characteristics, which led to an increase in responses identifying the cup with a green dot as Starbucks simply because Starbucks is a popular coffee brand. Had Starbucks used a control sample that was substantially similar to the specimen but for a blue triangle instead of a green circle, the TTAB would have viewed the survey results more favorably.

The TTAB also took issue with the sample population of respondents surveyed. Starbucks’ survey was conducted online using an Internet panel, which excluded consumers who do not regularly use the Internet or use the Internet by phone. The TTAB found Starbuck’s sample population underrepresented low-income, rural, and elderly consumers who do not use the Internet much, but who are still very much a reasonable part of the coffee purchasing public. A more well-rounded and inclusive sample population would have resulted in a more accurate depiction of association and recognition rates.

Secondary meaning surveys have evolved from having no control stimuli to more carefully crafted experiments based on the use of a control stimulus. The Starbucks decision is instructive for applicants relying on consumer surveys – make sure to use control stimuli that replicate the test stimuli except for the mark characteristic or attribute being tested, do not go the way of the green dot.

ARTICLE BY Gene Markin of Stark & Stark

For more, visit the NLR Intellectual Property section.

Dr. Seuss/Star Trek Mashup Boldly Goes to Ninth Circuit but Loses Fair Use’s Balancing Act

An author of Star Trek episodes teamed up with fellow Trekkies at ComicMix LLC to publish Oh, the Place You’ll Boldly Go!, an illustrated book that combined Star Trek characters with the stories of Dr. Seuss. Boldly used elements and illustrations from Seuss’s books Oh, the Places You’ll Go!, How the Grinch Stole Christmas! and The Sneetches and Other Stories. Dr. Seuss Enterprises, L.P., owner of the intellectual property in Dr. Seuss’s works, objected to the mashup book and sued ComicMix LLC for copyright and trademark infringement and unfair competition. The district court agreed with ComicMix that Boldly constituted a fair use of Seuss’s copyrights and granted summary judgment in ComicMix’s favor on the copyright claims. On appeal, however, the Ninth Circuit concluded that all of the statutory factors of the fair use defense weighed against ComicMix and reversed the district court’s copyright ruling, but affirmed the lower court’s trademark analysis

As explained by Dr. Seuss in Oh, the Places You’ll Go!, life is a great balancing act. Similarly, the test for fair use of a copyrighted work balances four statutory factors: (1) the purpose and character of the use, including whether the use is commercial or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work; and (4) the effect of the use on the potential market for or value of the copyrighted work. Applying these factors, the Ninth Circuit sent ComicMix packing.

First, the court analyzed the purpose and character of Boldly’s use of Seuss’s works, including whether Boldly was a transformative work. Although ComicMix asserted that Boldly was a parody of Go!, Boldly did not ridicule or critique Go!. Instead, Boldly focused on Star Trek characters and their adventures while evoking Go! by copying and repackaging Dr. Seuss’s “characteristic style” and illustrations. Consequently, Boldly was neither a parody nor transformative. Further, Boldly copied Go!’s illustrations, meaning, and message, and did so for a commercial purpose. The Ninth Circuit thus concluded that the first factor weighed definitively against fair use.

Illustration from Go! (left) and a “repackaged” illustration from Boldly (right)

Second, the creative and expressive nature of Seuss’s Go! weighed against a finding of fair use. The court noted that although the nature of the copyrighted work is usually not very significant in the fair use analysis, creative works like Go! are “closer to the core of intended copyright protection” than other types of works, such as informational works.

The third factor, the amount and substantiality of Boldly’s use of Go!, “weighed decisively” against fair use. Boldly used a substantial quantity of Go!—it copied nearly 60% of Go!, along with significant illustrations from two of Seuss’s other books, How the Grinch Stole Christmas! and The Sneetches and Other Stories. In fact, the court found that ComicMix deliberately and meticulously copied Seuss’s illustrations:

Excerpts from Go! (left) and Boldly (right)

In addition to a quantitative element, the third factor also has a qualitative component, which is often described as analyzing whether the copyist took the “heart,” or “the most valuable and pertinent portion” of the work. The Ninth Circuit held that Boldly had taken the heart of Seuss’s works. As an example, the court noted that ComicMix took the “highly expressive core” of Seuss’s Sneetches book by including illustrations of a machine from Sneetches on ten of Boldly’s twenty-two pages. In Seuss’s Sneetches, the machine is an integral part of the story because it can add and remove divisive heart-shaped symbols to and from the stomachs of Sneetches. Boldly copied minute details from the Sneetches machine; in fact, the illustrator stated that he “painstakingly attempted” to make the machines “identical.”

The machine from Sneetches (left) and Boldly (right)

The court concluded that ComicMix lacked justification for the substantial quantity and quality of its copying, especially considering that Boldly did not parody or transform Seuss’s works, and instead was a commercial exploitation.

For the fourth factor, the Ninth Circuit considered the potential market for, and value of, Seuss’s works. Seuss’s books have remained very popular and, for decades, Seuss authorized numerous derivative works. ComicMix planned to capitalize on Go!’s popularity during graduation season by scheduling Boldly’s publication “in time for school graduations.” Noting Seuss’s frequent collaborations and authorized licensing throughout the year, the court held that Boldly was likely to target and harm Seuss’s market for derivative works.

Because Boldly was an unauthorized and non-transformative work, ComicMix did not prevail on its fair use defense. Accordingly, the Ninth Circuit reversed the district court’s grant of summary judgment on Seuss’s copyright infringement claim.

Finally, the court affirmed the district court’s grant of summary judgment in favor of ComicMix on Seuss’s trademark infringement claim. The court held that dismissing the trademark infringement claim was proper because the use of Seuss’s registered and common-law trademarks (including in the title of Go!, the alleged “Seussian style of illustration,” and the claimed “Seussian font”) was not explicitly misleading. Under the Rogers test, the Lanham Act does not apply to the use of trademarks in an expressive work (like Boldly) unless the use is not artistically relevant, or if the use is explicitly misleading. Boldly satisfied the low threshold for artistic relevance, and the use was not explicitly misleading because Boldly listed the authors’ names on the cover and contained new expressive content.

The case is Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020).

ARTICLE BY Jessica L. Hannah of Finnegan

For more, visit the NLR Intellectual Property section.

2020 IP Law Year in Review: Patents

Executive Summary

In 2020, the US Supreme Court and Court of Appeals for the Federal Circuit continued to refine key aspects of intellectual property law on issues that will have an impact on litigation, patent prosecution and business strategy. This Special Report discusses some of the most important decisions.

The Federal Circuit issued several panel decisions clarifying the bounds of patent-eligible subject matter in the area of life sciences and computer technology. In the life sciences space, the court found several patents satisfied the conditions for patent eligibility. For example, the Federal Circuit found patent-eligible claims directed to preparing a fraction of cell-free DNA enriched in fetal DNA, claims directed to a method of operating a flow cytometry apparatus with a number of detectors to analyze at least two populations of particles in the same sample to be patent eligible, and claims directed to a method of treating type 2 diabetes mellitus using a DPP-IV inhibitor. In the area of computer technology, the court clarified that claims directed to an improvement to computer networks were patent eligible, but that claims directed to applying longstanding commercial practices to generic computer components remain ineligible. Given the uncertainty of patent eligibility law, questions surrounding life sciences and computer-related technology will continue to be raised in cases.

The Supreme Court issued one decision in 2020, in which it found that the Patent Trial and Appeal Board’s application of the time bar for filing a petition for inter partes review (IPR) is not appealable. The Federal Circuit issued two en banc decisions, including one decision confirming discussing the use of the phrase “consisting essentially of” in patent claims and patent eligibility of mechanical inventions.

Following on the heels of the Supreme Court’s 2017 TC Heartland v. Kraft Foods decision addressing patent venue, the Federal Circuit addressed patent venue in Hatch-Waxman litigation. The court explained that for the purposes of determining venue, infringement occurs only in judicial districts where actions related to the submission of an abbreviated new drug application (ANDA) occur, and not in all locations where future distribution of the generic products specified in the ANDA is contemplated. This ruling may have far-reaching consequences, including the ability for ANDA defendants to effectively control venue for litigation.

Patents

2021 Outlook

The Supreme Court is set to hear at least two patent cases and one copyright case this term. In The United States of America v. Arthrex, Inc., the Court will consider whether PTAB judges are unconstitutionally appointed and the other addressing whether assignor estoppel and in Minerva Surgical, Inc. v. Hologic, Inc., et al., the Court will consider whether the doctrine of assignor estoppel bars an assignor from asserting invalidity of an assigned patent in district court. A decision is also expected in Google LLC v. Oracle America, Inc. on the issue of copyright ownership of application programming interfaces used in computer technology. We also expect to see many patent trials occurring toward the middle and end of 2021. The COVID-19 pandemic has created a backlog of cases that were set to be tried and parties are likely to face pressure from Court to narrow the issues to be tried. Judge Alan Albright has also made headlines and has attracted case to the filed in the US District Court for the Western District of Texas. We expect even more cases to be filed this year.

ARTICLE BY Amol Parikh, Cecilia Choy, Ph.D., Amy Mahan, PhD, Hala Mourad, Colin J. Stalter and Elizabeth Teter of

McDermott Will & Emery

For more, visit the NLR Intellectual Property section.

This Mashup Is Not a Place You’ll Go – Seuss Copyright Will ‘Live Long and Prosper’

Presented with a publishing company defendant’s mashup of Dr. Seuss’ copyrighted works with Star Trek in a work titled Oh, the Places You’ll Boldly Go!, the US Court of Appeals for the Ninth Circuit tackled claims of both copyright and trademark infringement, including the defense of fair use and the use of trademarks in expressive works. The Ninth Circuit reversed the district court’s summary judgment in favor of defendants on the copyright infringement claim and affirmed the district court’s dismissal and grant of summary judgment in favor of defendants on the trademark claim. Dr. Seuss Enterprises, L.P. v. ComicMix LLC, et al., Case No. 19-55348 (9th Cir. Dec. 18, 2020) (McKeown, J.)

Seuss Enterprises owns the intellectual property in the works of late author Theodor S. Geisel, better known as Dr. Seuss. Seuss Enterprises carefully yet prolifically licenses the Dr. Seuss works and brand across a variety of entertainment, media, art and consumer goods, including derivative works of Dr. Seuss’ final book, and graduation favorite, Oh, the Places You’ll Go! When Seuss Enterprises encountered a Kickstarter campaign to raise funds for the Oh, the Places You’ll Boldly Go! mashup work created by ComicMix (a company whose employees include an author of Star Trek episodes), it filed suit for copyright and trademark infringement. The district court granted ComicMix’s motion for summary judgment, holding that the Boldly work was a fair use of Dr. Seuss’s Oh, the Places You’ll Go! and that Seuss Enterprises did not have a cognizable trademark infringement claim under the Lanham Act. Seuss Enterprises appealed.

On appeal, ComicMix asserted its defense of fair use by arguing that its copying of the Dr. Seuss works (described at one point in the record as painstaking attempts to create “identical” illustrations) resulted in a parody of the works. The Ninth Circuit examined the facts under the four non-exclusive factors of fair use reflected in § 107 of the Copyright Act:

The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
The nature of the copyrighted work
The amount and substantiality of the portion used in relation to the copyrighted work as a whole
The effect of the use upon the potential market for, or value of, the copyrighted work.

Remarking that the outcome of the purpose and character of the use factor influences the assessment of the third and fourth factors, the Ninth Circuit concluded that the Boldly work was not transformative as a parody or otherwise, and that the “indisputably commercial” nature of the work weighed against fair use. The Court explained that a parody exists only if the resulting work critiques or comments on the underlying copyrighted work. The Ninth Circuit cited its decision in another Seuss case (Dr. Seuss Enters. v. Penguin Books), which involved the retelling of the O.J. Simpson murder trial through the lens of The Cat in the Hat. Here, the Court similarly found that Boldly only “evokes” Oh, the Places You’ll Go!, rather than ridiculing the original copyrighted work in any manner. Further, the otherwise unchanged nature of the Seussian world featuring Star Trek characters without the addition of any “new expression, meaning, or message” to the Dr. Seuss work did not result in a transformative use.

Under the second factor, the nature of Oh, the Places You’ll Go! as a creative, expressive work (versus an informational or functional work) was found to weigh against fair use. The court explained that creative works are “closer to the core of intended copyright protection,” and fair use is more difficult to establish when such creative works are at issue.

With respect to the third fair use factor, the Ninth Circuit found that the quantitative amount and qualitative value of the original work used was “substantial” and weighed “decisively” against fair use. Quantitatively, close to 60% of the Seuss book was “replicated, as much and as closely as possible” along with other copied Seuss illustrations. Qualitatively, ComicMix was found to have taken the “heart” of the Dr. Seuss works. Harkening back to the first factor, without any parody or transformative work at hand, the Court found little justification for the amount and substantiality of the Dr. Seuss works used.

The Court found that the fourth and final factor also weighed against fair use because of the value of, or potential market for, the Seuss works. Specifically, having established the non-transformative and commercial uses of the Dr. Seuss works under the first factor, the Court found such uses to have the potential to lead to market harm for the original works. The Court pointed to the “crucial right” of a copyright owner to access the derivative works market, in “which Seuss engaged extensively for decades,” and determined that ComicMix did not meet its burden of proof in bringing forward favorable evidence about the relevant markets. With all four factors weighing against ComicMix’s defense of fair use, the Ninth Circuit reversed the district court’s grant of summary judgment in favor of ComicMix and remanded.

The Ninth Circuit did, however, affirm part of the district court’s dismissal and grant of summary judgment in favor of defendants with respect to Seuss Enterprises’ claim of trademark infringement based on its rights in the Oh, the Places You’ll Go! trademark, as well as the “Seussian” brand typeface, illustration and style. Under the test established in Rogers v. Grimaldi, when a trademark is used in an expressive work (such as Boldly), there is no actionable claim under the Lanham Act unless the trademark has zero relevance to the underlying work or explicitly misleads consumers as to the source or content of the work. Here, the Court found the Seuss trademarks relevant to the artistic purpose of Boldly and did not find Boldly to be explicitly misleading as to its source. The Court thus held that the Lanham Act did not apply and affirmed the denial of Seuss Enterprises’ trademark claim.

ARTICLE BY Sarah Bro of McDermott Will & Emery

For more, visit the NLR Intellectual Property section.

Category: Intellectual Property

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