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 Intellectual Property News | |
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July 2011 |
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Previous issues of GRR Intellectual Property News can be found on our website. | |
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GRR Client Wins Summary Judgment in Trademark Case |
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On June 8, 2011, Judge Dickinson R. Debevoise of the United States District Court of the District of New Jersey granted summary judgment to GRR client United Food Import, Inc. In this case involving the trademark BASMA for frozen food products, GRR convinced Judge Debevoise that the Defendant and its principal had both intentionally infringed GRR's client's trademark through the unauthorized sale of counterfeit goods.
The defendants argued that their supplier, a company by the name of Orouba, actually owned the rights to the BASMA mark. However, the Court found no merit to this defense. In its ruling, the Court relied heavily on the fact that GRR, on behalf of its client, had previously defeated Orouba in proceedings before the Trademark Trial and Appeal Board. Every other defense that was asserted by the defendants was also rejected by the Court, and the defendants were enjoined from committing acts of further infringement.
United Food Import, Inc. was represented by GRR attorney Richard S. Schurin. |
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Hollywood Needs to Pass the Patent Bar |
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In a recent episode of Suits, a new USA Network drama about lawyers, the story revolved around patents. Although we appreciate the acting, and the attention to patents, obviously the script wasn't checked by anyone even remotely akin to a patent lawyer. First of all, only lawyers or agents admitted to the Patent Bar can file an application. As far as we know, neither Mike Ross, the recent hire who never went to law school, and Harvey Specter, the hiring partner, aren't patent attorneys, and the person who actually filed the papers wasn't identified as a patent practitioner. And central to the plot was the receipt of an examination by the Patent Office within 12 hours of filing. But it takes years before a patent is examined by the Patent Office, not 12 hours!
We offer our services to USA Network with respect to fact checking future episodes regarding intellectual property law.
For more information, contact Amy B. Goldsmith.
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New Domains Are on the Way |
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| On June 29, 2011, the Board of Directors of the Internet Corporation for Assigned Names and Numbers ("ICANN") approved the process for applications for
new top level domains (TLDs). Applicants will be able to create the portion of a domain name to the right of the "dot"; Cannon has already announced that it plans to apply for .cannon.
Under the approved process, ICANN will accept applications for new TLDs from January 12, 2012 through April 12, 2012. ICANN has prepared a guidebook to assist applicants with their applications and the application process. Applications are expected to be complicated documents, and must be accompanied by an initial filing fee of $185,000. Once submitted, applications will be reviewed by ICANN.
Although it is expected that the application fee will insure that only serious applicants participate in the application process, there will be procedures for opposing infringing "strings". In the event that multiple entities apply for the same string, the string will be auctioned.
New TLDs approved by ICANN are not expected to be launched until 2013.
For further information, please contact Marc P. Misthal, whose practice includes counseling clients regarding internet and domain name issues.
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Changing 150 Years of Practice, U.S. is Set to Adopt First to File Patent System |
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Both houses of Congress recently passed bills which will change the way in which patent applications are granted priority, and a final bill implementing this change is expected to become law shortly. For the last 150 years, U.S. law provided that the inventor who conceived of an invention first and diligently reduced it to practice (or filed a patent application for the invention) was entitled to the conception date as his priority date. This law was regarded by most inventors (including independent inventors, inventors working for large corporations and universities, and everybody in between), as equitable. However, the rest of the world awards priority to patent applications based strictly on filing dates. For the last twenty years, perhaps as a consequence of globalization, nations have focused on harmonizing their respective intellectual property laws. The law on priority is the latest U.S. law to be changed as part of this effort.
In addition to forcing inventors to move quickly to file a patent application, the new law affects patent prosecution. First, any reference can be used to invalidate a claim in a patent or a patent application if it was available earlier than the earliest filing date of the patent. Second, in a dispute between two inventors claiming the same subject matter, the inventor who filed an application first is automatically granted priority (unless the inventor who filed second can show that the first inventor derived the invention from the second inventor). Dates of conception are no longer relevant.
Under this new law, it is imperative that patent applications be filed as soon as possible, even if it is just a provisional application. Best practices include having all inventors record the entire history of the invention, especially failures and successes, and keeping IP counsel involved from the beginning so that the application can be filed at the earliest possible date. These practices will insure that a patent application that is complete and meets the requirements of the Patent Office can be expeditiously filed, taking advantage of this dramatic change in the U.S. patent law.
We will follow this change in the law closely and advise when it goes into effect.
For more information, contact Ted Weisz, whose practice includes counseling clients on patent prosecution. |
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Mike Tyson's Tattoo Artist Fails to K.O. "The Hangover, Part II"--But is the Use of the Tattoo a Fair Use? |
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| Recently the legal terms "fair use" and parody have been mentioned in news stories about the Warner Brothers movie "The Hangover, Part II." The tattoo artist who inked a Maori-inspired tribal tattoo on Mike Tyson's face in 2003 sued Warner Brothers for placing an exact replica of the tattoo on the face of actor Ed Helms. Among the relief sought by the tattoo artist, S. Victor Whitmill, was a temporary injunction preventing the release of the movie.
Federal Judge Catherine D. Perry denied Mr. Whitmill's request for an injunction. Judge Perry noted that the public interest favored protecting the "thousands of other business people in the country as well as Warner Brothers, and not causing" Warner Brothers and theatres scheduled to show the movie "to lose money." Also, the court found that Mr. Whitmaill could later be compensated for any harm caused by the movie's release. Although Judge Perry allowed the movie to be released, she stated that Mr. Whitmill was likely to prevail on his claim that Warner Brothers committed copyright infringement when it copied his design without permission.
Judge Perry was not convinced by Warner Brother's argument that placing the tattoo onto comedic actor Ed Helm's face constituted a parody of Mike Tyson, the tattoo, or its creator. Judge Perry stated: "This was an exact copy. It's not a parody." Judge Perry added that Warner Brother's "use of the tattoo did not comment on [Mr. Whitmill's] work or have any critical bearing on the original composition. There was no change to this tattoo or any parody of the tattoo itself." Further, according to the court "[a]ny other facial tattoo would have worked as well to serve the plot device."
In evaluating the Judge's opinion, an argument can be made for finding that use of the tattoo is a parody. First, the fact that Warner Brothers copied the entire tattoo from Tyson's face does not preclude a determination that the copying was for a parodic purpose. Second, by placing the tribal tattoo onto the face of the character Stu, a wimpy dentist who was punched in the face by Tyson in the first movie and who is intimidated and mocked in "The Hangover, Part II" by his future father-in-law, the original tattoo is transformed and its meaning is changed significantly. Further, "any other facial tattoo" would not have sufficed; the tattoo specifically references Tyson and his toughness, a point that is immediately clear to the movie's audience. When shown on Stu's face for the first time, the tattoo indicates not only that something went very wrong the previous night for Stu and his buddies, it suggests that Stu has transformed and found his inner-Tyson. Indeed, over the course of the movie Stu goes from being a pushover to discovering his inner toughness.
Tyson's tattoo had to be copied in order for the joke to be immediately clear to the audience. As the Supreme Court explained in Campbell v. Acuff Rose, parody's art lies in the tension between the "known original and its parodic twin." The tattoo's placement onto a new canvas, Stu's face, is striking and it immediately suggests Stu's transformation into Tyson or a Maori-like warrior. The question for the court is whether the placement of the tattoo onto Stu's face is "transformative" of the original work - whether the latter work adds something new, with a further purpose or different character and altering the first with new expression, meaning or message - and it seems that by copying the tattoo famous for being on the face of Mike Tyson, a fear-inspiring former heavyweight champion who once bit the ears of an opponent, and putting it onto the face of a cowardly, Smartwater drinking, Jewish dentist is indeed transformative. The Supreme Court has explained that the threshold question raised by the parody defense is "whether a parodic character may reasonably be perceived. Whether going beyond that, [the] parody is in good taste or bad does not and should not matter". (Emphasis added). The defense of fair use does not apply "only to those who speak clearly, whose jokes are funny, and who parodies succeed."
Further, the fact that Warner Brothers copied the entire tattoo does not require a per se determination that the copying was illegal. The legal standard is that "the quantity and value of the material used" must be "reasonable in relation to the purpose of the copying." The Supreme Court has acknowledged that "the extent of permissible copying varies with the purpose and character of the use", and that even the "reproduction of [an] entire work" will sometimes not require a finding of copyright infringement. Since it would have been almost impossible for the filmmakers of "The Hangover, Part II" to invoke Mr. Tyson and his tattoo without copying the entire tattoo, Warner Brothers' copied no more than was necessary.
Judge Perry, however, will not have an opportunity to rule on the issues of fair use and parody, since Warner Brothers and Mr. Whitmill reached a settlement, the terms of which have not been disclosed. Accordingly, no final determination will be made regarding whether the copying constitutes fair use. Unless a similar type of copying results in another lawsuit, currently, there is no final determination regarding whether use of a copied copyrighted tattoo as a plot device is transformative use which falls within the fair use defense.
For further information, contact Ariel S. Peikes, who counsels clients regarding copyrights. |
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Update: The Supreme Court and Patent Law |
In recent Newsletters (here, here and here), we discussed several cases pending before the U.S. Supreme Court. The Court has spoken, as follows:
In Global-Tech Appliances, Inc. v. SEB S.A. the issue was to what extent prior knowledge can be considered applicable to inducing infringement under the Patent Act. Is a defendant required to show "affirmative intent" as opposed to "deliberate indifference" in inducing others to infringe?
The Supreme Court held that "willful blindness", not affirmative intent, is sufficient to meet the knowledge prong of induced infringement.
As we previously reported, inventors are advised that there is no downside to making their attorneys aware of known products before a right-to-use search begins so that the search can be as comprehensive as possible. The Supreme Court's holding means that when applicants are aware that patented products are in the marketplace, and an infringement may arise, the applicants have a duty to inform their searchers of those products.
In Stanford v. Roche, the Court evaluated the wording of assignments and how a relatively new law, the Bayh-Dole Act, effects those rights when a patent, funded by federal research money, issues. Under this Act, universities and small businesses may leverage intellectual property discovered under federal funds by merely asserting ownership of patent rights, something Stanford claimed to have done in this case.
In short, the Court held that a federally funded contractor does not necessarily own patent rights to inventions resulting from funded projects, nor does mere employment automatically transfer title to an employee's invention.
The wording of assignments in employment agreements will have an impact on ownership of future inventions. An understanding of assignment obligations by both employers and inventor-employees, whether or not federal funding is involved, will benefit both sides of the equation and encourage innovative product development without leading to litigation.
In Microsoft v. i4i Limited Partnership, the Supreme Court considered the standard of proof needed to invalidate a patent. The standard under review, requiring "clear and convincing" evidence that the patent is invalid, was established by the Supreme Court at least as far back as 1934. Typically a successful challenger would proffer prior art not cited by the Patent Office which was relevant enough to overturn the patent.
In this case, Microsoft provided evidence that a reference would probably invalidate i4i's patent. However, the evidence fell short of the "clear and convincing" standard, and the court held the patent to be valid. This judgment was affirmed on appeal, and damages against Microsoft were assessed at well over $100M. Predictably, Microsoft challenged the long established standard. But it lost.
The Supreme Court left the standard and the judgment in place.
For more information, contact Barry R. Lewin
whose practice includes preparation and prosecution of patent applications for mechanical devices as well as for telecommunications and information technologies. |
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Intellectual Property News Editorial Board: Amy B. Goldsmith (agoldsmith@grr.com), Richard S. Schurin (rschurin@grr.com), Marc P. Misthal (mmisthal@grr.com) and Steven Stern (sstern@grr.com) of Gottlieb, Rackman & Reisman, P.C.
Suggestions, questions and comments should be directed to the Editorial Board by email or telephone (212) 684-3900.
For over forty years, Gottlieb, Rackman & Reisman, P.C. has provided legal advice and guidance on all aspects of patent, trademark, copyright, and unfair competition law, tailoring its counsel to the specific needs of its clients.
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