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ON THE LIGHTER SIDE 

World renown American musician and singer Lady Gaga was evidently not amused by what was happening in the U.K in March.

The superstar made a claim for trademark infringement and unfair competition against the makers of a suddenly popular and controversial ice cream called "Baby Gaga." The product, made from human breast milk produced by paid donors, made its debut in the Spring of 2011 at The London-based The Icecreamists shop in London.

Lady Gaga's lawyers accused the The Icecreamists' store of "taking unfair advantage of, and riding on the coattails of" Lady Gaga's trademarks. As for the ice cream, the lawyers for Lady Gaga said that it was "deliberately provocative and, to many people, nausea-inducing."

Matt O'Connor, owner of The Icecreamists, officially responded by saying that Lady Gaga was "acting like a big baby who is crying over spilled breast milk...And this is coming from the woman who wears the flesh of rotting cows as an awards-show gown."

Nonetheless, Lada Gaga's money and zeal temporarily forced The Icecreamists company to shut down the sales of its controversial breast milk ice cream. Also, health concerns were apparently raised by British government officials.

But there is good news for those of you traveling to Europe this summer. Breast milk ice cream is back in a new and perhaps bigger way. The Icecreamists now offer the popular product once again; the product has also been determined to be safe for human consumption and has been officially cleared by government health officials. However, it will be marketed under a new brand - Baby Goo Goo. Now that's a name that will have customers flocking to purchase a breast milk ice cream product!

IP LAW IN PRACTICE

Gene Sequences are Patentable Again  

On July 29, 2011, the Federal Circuit Court of Appeals overturned the New York district court's decision declaring certain breast cancer gene sequences unpatentable as products of nature (Association of Molecular Pathology, et al. v. Myriad Genetics, Inc., 2010-1406 (July 29, 2011)). Previous editions of the GRR newsletter have examined this issue (see prior articles here, here and here).

There were several issues before the appellate court on Myriad's appeal. The first issue was whether the plaintiffs even had the right to bring the case. The Federal Circuit found that only one of the plaintiffs, Dr. Ostrer, had standing, based on his allegation of a sufficiently real and imminent injury (being sued by Myriad).  This injury would result if Dr. Ostrer, as he alleged, actually and immediately performed the BRCA tests without paying the Myriad license fee, which would potentially infringe Myriad's patent. The appellate court was not persuaded by Myriad's argument that its inaction over the last 10 years precluded standing. In the late 1990's, Myriad had used its patent rights to stop every other provider of BRCA tests, and no current statements of Myriad indicated that it wouldn't act again in 2011 against Dr. Ostrer or any other party who offered the BRCA tests without being licensed. Nor was laches applicable to preclude a patent action for prospective relief. Lastly, the Federal Circuit reversed the district court's determination that all of the plaintiffs had standing because of the widespread understanding that one may engage in BRCA testing at the risk of being sued for infringement by Myriad. Each plaintiff needed to demonstrate an immediate injury proximately caused by the Myriad; only Dr. Ostrer could do so.

The next issue, whether isolated DNA molecules are patentable or products of nature, is one which galvanized the biotech research community. Plaintiffs took the position that isolated DNA molecules are not "markedly different" in name, character and use from native DNA since the nucleotide sequences of isolated DNA and native DNA are identical. Myriad's position was that isolated DNA is a non-naturally occurring molecule which is "markedly different" in name, character and use. The district court agreed with the plaintiffs, finding that the tests work because the informational content dictated by DNA doesn't change even if the chemical structure is different. The Federal Circuit overturned this decision, finding that the markedly different standard is satisfied because isolated DNA is different chemically from native DNA. "It is the distinctive nature of DNA molecules as isolated compositions of matter that determines their patent eligibility rather than their physiological use or benefit. ....the patent eligibility of an isolated DNA is not negated because it has similar informational properties to a different, more complex natural material that embodies it.....We recognize that biologists may think of molecules in terms of their uses, but genes are in fact materials having a chemical nature and, as such, are best described in patents by their structures rather than their functions." The Court further said that its view comports with the Patent Office's long standing view and any changes to patent eligibility should emanate from Congress, not the courts.

The Court also held valid Myriad's method of screening potential cancer therapeutics, finding that growing transformed cells in the presence or absence of a potential cancer therapeutic is an inherently transformative step involving the manipulation of cells and their growth medium.

The Plaintiffs achieved a victory in all but one of the method claims: the Federal Circuit concluded that "Myriad's claims to 'comparing' or 'analyzing' two gene sequences fall outside the scope of �101 because they claim only abstract mental processes." These claims failed the machine or transformation test for patentability (see prior articles here and here)

What will happen next? It is likely that Dr. Oster, the one remaining plaintiff, will appeal to the Supreme Court. We will continue to monitor this fascinating case.

For more information, contact Amy B. Goldsmith, whose undergraduate studies focused on genetics.

Dates for .XXX Sunrise Applications Announced  

As we previously reported, the .XXX domain is scheduled to launch later this year. ICM, the registry operator for the .XXX domain has announced that a "sunrise" period for trademark owners will run from September 7, 2011 through October 28, 2011. Three types of "sunrise" applications will be accepted: 1) Sunrise AT, for members of the adult entertainment community with trademarks registered prior to September 1, 2011; 2) Sunrise AD, for members of the adult entertainment community who own a live, matching adult domain name in another TLD which was registered before February 1, 2010; and 3) Sunrise B, for owners of trademark registrations issued before September 1, 2011 who want to block their marks from being used.

Trademark owners who apply for a Sunrise B blocking registration will not own a .XXX domain name; rather, they are purchasing the right to have their mark excluded from registration. A blocking application will be valid for ten years, the length of ICM's contract with ICANN.

.XXX domain names will be available on a "land rush" basis from November 8 through 25, 2011, and will be generally available starting on December 6, 2011.

For further information, contact Amy B. Goldsmith or Marc P. Misthal, who counsel clients on domain name issues.

The Right of Publicity 

The "right of publicity" gives public figures powerful rights in their public persona. A violation of an individual's right of publicity occurs if someone appropriates the commercial value of a person's identity by using the person's name, likeness, or other indicia of identity for purposes of trade without consent. The right of publicity is similar to the "right of privacy," which is often asserted by public figures as well; however, the right of privacy protects personal interests, while the right of publicity protects commercial injuries. As with copyrights and patents, the right is justified under an incentive-based theory and encourages individuals to invest in and strive for success in public endeavors such as music, acting or athletics.

The right of publicity is governed by state law in the form of statutes, common law or both, and therefore its scope and method of application varies from state to state. Nevertheless, the right of publicity is constrained by the Constitutional interest in freedom of expression, which is guaranteed under the First Amendment. In some instances, parties may assert a right of publicity under the Lanham Act. Section 43(a) of the Lanham Act may be used when claiming deceptive marketing or consumer confusion as to celebrity endorsement or sponsorship of goods and services.

The most recent assertions of the right of publicity have been by famous athletes in connection with video games. Courts have ruled that an athlete's consent is required where the video game involves life-like players that have the same jersey numbers and physical characteristics as the actual individual athletes.

For example, in Keller v. Electronic Arts, Inc., Samuel Keller, a former starting college football quarterback, brought a right of publicity claim in California, alleging that Electronic Arts, Inc. ("EA") used his name and likeness in a video game without his consent. EA sought to dismiss the action, making several arguments. EA argued that the value of the video game is derived from significant transformative elements and not Keller's fame. The court rejected this argument, explaining that one reason that consumers purchased the game was the ability to play as identifiable real-life players. The court rejected EA's public interest defense as well, which has been interpreted by California courts as protecting factual data that has been published or reported, and also found that EA's use did not fall under the public affairs exemption.  The case is still pending. A similar case involving the unauthorized use of the likenesses of retired NFL players in the Madden NFL video game franchise, Davis v. Electronic Arts, Inc., is also pending.

The public persona of athletes, celebrities and other public figures is becoming recognized as a property right throughout the United States, although the scope of recognition varies depending on the jurisdiction where a claim is brought. As technology continues to develop, courts must maintain a balance between First Amendment protections of expression and the right to publicity.

For further information, contact Diana Muller, whose practice includes counseling clients about their publicity rights, or Erica Gould.

IP DEVELOPMENTS