IP Law Bulletin

Not every copyright issue nowadays arises from the Internet.

Here’s one that arises from venerable needle and thread.

Haute couture is tired of knock-offs and is trying to “put its Manolo down.”

New York Senator Charles Schumer - - what, you were expecting Nebraska’s Ben Nelson to take the lead on this? - - is sponsoring the Innovative Design Protection and Piracy Prevention Act, intended to provide three years of copyright protection for fashion designs. This short term is itself interesting: first, if you write a non-pseudonymous book, your copyright is good for life plus 70 years; second, I’m showing my age, but didn’t the “chemise” and Rudi Gernreich’s topless bathing suit each come and go in about four months? Compared with life plus 70 years, three years seems absurdly short; compared with the labile nature of fashion (which mutates faster than a clever bacterium), it seems absurdly long.

Nevertheless, no matter how ardently you may long for the next Bonfire of the Vanities, it’s hard not to sympathize somewhat with a hardworking fashion designer. Personally, I’m not sure I see the point of what he or she does; on the other hand, I freely confess I could never design a dress or a mule myself.

There could be sticky wickets. The proposed law would protect original designers only against “substantially identical” copies. The standard for copyright infringement otherwise is “substantially similar.” “Identical” will be a higher bar for a plaintiff designer to clear. But let’s face it: the purpose of the proposed legislation is to deter knocking-off in the first place, rather than to provide an effective remedy for completed copying. Who’s going to order up 10,000 dresses from a Chinese tailor based on his or her own judgment call that he or she is being only “similar” and on no account “identical.”

And how will evidence be introduced?

Will runways be installed in courtrooms for models to descend wearing the “accusing” and the “accused” works?

Will aging designers whose stars are fading find second careers as expert witnesses?

Those farther down the fashion food chain are supposed to be protected from liability: buying or selling a knock-off inadvertently is not actionable. Will a phrase like “friends don’t let friends buy knock-offs on purpose” pass into the language? Amateur seamstresses (of either gender) may copy protected designs for personal use. (TiVo for clothes?) But what happens if you and your son are the same size, and he asks one night to borrow your “Tommy Hilfiger”?

I know not what course others may take, but as for me, you’ll find me at my local Goodwill Industries second-hand clothes shop.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.

On June 2, 2010, the Board of Patent Appeals and Interferences (BPAI) at the United States Patent and Trademark Office issued Ex Parte Quist, a decision on a request for rehearing regarding the panel’s affirmation of a non-final §103 rejection on April 30, 2008.  

The application was directed to methods for manufacturing decorative boards. Claim 1 recited:

1. A process for the manufacturing of decorative boards with an abrasion resistant surface and edges with joining functionality, the process comprising the steps:

a) in a first step, cutting a carrier board having an upper surface to the desired dimension and making edges with at least one joining element, thereafter
b) applying radiation curable dry acrylic lacquer powder to the upper surface of the board,
c) heating the acrylic lacquer so that it melts,
d) curing the acrylic lacquer by means of radiation, the radiation being selected from the group consisting of UV-radiation and electron beam radiation

The Board found that the term “carrier board” was not defined in the claim or the specification, and that it was not defined as including only uncoated boards. In addition, the Board found that any board, coated or uncoated, could be a “carrier board” as claimed.

There were three items at issue:
(1) Did the Board misapprehend the subject matter sought to be patented?
(2) Did the Board misconstrue the evidence submitted in the declaration found in the Evidence Appendix?
and
(3) Did the panel properly evaluate the evidence supporting the prima facie case with any rebuttal argument and/or evidence in reaching the final conclusion of obviousness and affirming the obviousness rejection?

Regarding the issue of misapprehending the subject matter, the Appellants argued that the Board did not distinguish between all of the steps of the claims. Specifically, the Appellants argues that the Board did not distinguish between the steps of cutting the board, making edges with a joining element, and then applying a lacquer powder. Looking at the claim construction, the Board concluded that the claims include the steps of cutting the board to form a joining element and applying a coating to the board. The Board explained that the claim does not limit the board to one that is without a coating prior to being cut.  

In addition, the Appellants put emphasis on the advantage of their claimed invention over the prior art concerning the fact that the coating material is not wasted after it is applied by milling it away to form joints, as it is applied before the joints are milled. In response, the Board concluded that this argument is improper as this is a new argument not previously heard. Thus, this argument by the Appellant is improper and untimely as it was not made prior to the request for reconsideration.

Appellants also argued that the prior art references do not solve the problem of the costly removal of coating material when forming the joints. The Board found this unpersuasive as well, reiterating that this argument is untimely as this advantage of the claimed invention was only first argued during this request for rehearing, and the fact that the Board interpreted the claims to include uncoated and coated boards as carrier boards.

Regarding the issue of misconstruing the declaration evidence, the declaration contained statements that no current manufacturer of laminate flooring forms the joints before applying the coatings, and that this would not be a conventional way to create the boards. The Board notes that secondary considerations are only relevant if the actual product includes the claimed features, and only in these circumstances will they be given substantial weight. As the Board concluded that the claims at issue are broader than boards that are joined before a coating is applied, these statements in the declaration are not particularly relevant to the issue of non-obviousness.

Regarding the issue of properly evaluating the evidence supporting the prima facie case, the Appellants argued that the Board used an improper legal standard in their decision as they did not base their decision on the entire record by a preponderance of the evidence. The precedent in the Frye decision stated that the Board should review contested findings in light of all the evidence on those particular issues. While the Board agreed that this standard was applicable in the present case, they found that the correct standard and procedure was applied. Specifically, they found that the Board’s analysis of the rebuttal evidence regarding the prima facie case showed that all the proper evidence was weighed. In addition, the decision included statements that the whole record was reviewed and considered.

Thus, the Board reconsidered the decision that was entered on April 30, 2008, but did not make any changes to the decision.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

In National Pork Bd. v. Supreme Lobster and Seafood Co., Opp. No. 91166701 (TTAB June 11, 2010) the pork industry successfully prevented an applicant from registering the mark “THE OTHER RED MEAT” for fresh and frozen salmon on the basis that granting this mark registration would dilute the fame of its own mark “THE OTHER WHITE MEAT.”

U.S. trademark owners, even those with famous marks, historically have had a hard time stopping people from adopting parodies of their trademarks on different goods. For example, a few years back, Louis Vuitton failed to stop the Haut Diggidy Dog company from selling dog treats under the mark “CHEWY VUITTON.”

In principle, the U.S. trademark laws have long offered protection to the owners of famous marks from dilution by others. However, the courts have been reluctant to put parody marketeers out of business because of a stringent test the U.S. Supreme Court announced in 2003. In the Moseley v. V Secret Catalogue case, the owners of the “VICTORIA’S SECRET” trademark for lingerie tried to stop Moseley from selling adult products under the “VICTOR’S SECRET” mark. The Supreme Court reversed the lower court decision and held that owner of the famous mark had to prove actual harm, not simply a likelihood of harm, to be entitled to relief under a “dilution by tarnishment” cause of action.

Following the Moseley decision, in 2006, Congress passed the Trademark Dilution Revision Act (TDRA), which revised the U.S. trademark laws to make it easier for trademark owners to stop free rides on the coattails of famous marks. Section 1125(c) now provides, in pertinent part:

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(Emphasis added.) The TDRA, in essence, reversed the ruling in the Moseley case and lowered the bar by requiring only a showing of a likelihood of harm to obtain relief.

Section 1125(c) actually provides two causes of action: “dilution by tarnishment” or “dilution by blurring.” Tarnishment presumably addresses situations like the Moseley case, where the VICTORIA’S SECRET mark could be sullied by association with sex toys and the like. Blurring, on the other hand, addresses situations where use of the same or a similar mark on unrelated goods simply impairs the distinctiveness of the famous mark.

The TDRA also enumerates the factors that are to be taken into account when “dilution by blurring” is alleged:

In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

Even with the new statutory rights provided by the TDRA, famous trademark owners have not had a easy time preventing dilution (as the 2007 “CHEWY VUITTON” case, mentioned above, demonstrates). Few cases have gone to trial to provide clear guidance on what type of evidence is needed to prove dilution, especially dilution by blurring.

A recent decision by the U.S. Trademark Trial and Appeal Board (TTAB), however, provides a detailed roadmap for proving dilution by blurring claims. (Although the TTAB lacks the injunctive powers of federal district courts, it follows the same standards in ruling on applications for registration.) National Pork Bd. v. Supreme Lobster and Seafood Co. involved a challenge by the pork industry to the attempt by an applicant to register the mark “THE OTHER RED MEAT” for fresh and frozen salmon.

The National Pork Board is a quasi-governmental agency formed by the Pork Promotional, Research and Consumer Information Act (a.k.a. the Pork Act) of 1985 to “promote consumption of pork and pork products.” It collects a fee on all hogs sold in the U.S. and has spend over 500 million dollars since 1987 on pork “demand enhancement activities.” It owns U.S. registrations on “THE OTHER WHITE MEAT” mark for “association services namely promoting the interests of the members of the pork industry,” as well as for cookbooks, brochures about pork, pens, pencils, crayons, bumper stickers, t-shirts, sweatshirts, aprons, jackets and hats, among other things.

The Supreme Lobster and Seafood Company, on the other hand, is a bantamweight distributor of seafood to supermarkets and restaurants in the greater Chicago area.

By seeking registration of the “THE OTHER RED MEAT” mark, Supreme Lobster essentially signed up for a cage fight with the Pork Board at the TTAB, where the proceedings follow the federal rules of civil procedure but all testimony is submitted in writing without any right to a trial by jury or opportunity to challenge live witnesses.

The National Pork Board mounted a case that one would have expected from a 900 pound gorilla. It presented testimonial depositions from its CEO, and its vice-presidents of operations, industry relations, and “demand enhancement,” as well as it former staff economist and its directors of brand strategy, retail marketing, consumer marketing, and culinary niche marketing.

Perhaps more importantly, the National Pork Board presented survey evidence that the the TTAB found persuasive on several issues. It presented a fame study conducted by Northwestern University in 2000 in which twenty-five slogans were compared in over a thousand telephone interviews. This survey concluded that “THE OTHER WHITE MEAT” slogan was the fifth most recognized slogan in the U.S. (recognized by over 80% of adult respondents) and allowed the TTAB to conclude that “THE OTHER WHITE MEAT” mark was not only famous but “part of the fabric of popular culture in the United States.”

The Pork Board also presented a dilution survey that it commissioned at the outset of the litigation in 2007. An independent survey company conducted interviews in which a screener played a recording of the Supreme Lobster slogan and then asked “Thinking about the slogan you just heard [The Other Red Meat], do any other advertising slogans or phrases come to mind?” Thirty-five percent responded with the Pork Board’s mark.

The TTAB also found the two marks were highly similar and noted that Supreme Lobster’s CEO admitted in his deposition that he knew of the Pork Board’s mark when he picked his slogan. Based on all of these factors, the TTAB concluded that the applicant’s mark, “The Other Red Meat,” was likely to dilute by blurring the Pork Board’s “THE OTHER WHITE MEAT” mark.

The TTAB decision provides very useful guidance for the owners of famous marks in terms of how to use survey evidence to prove the fame of their marks and likelihood of dilution (despite some criticism of the use of leading questions in the Pork Board’s dilution survey).

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.

On August 7, 2010, Elena Kagan officially assumed office as an Associate Justice of the Supreme Court of the United States. Justice Kagan was born in New York, New York and has earned degrees from Princeton, Oxford, and Harvard Law School, where she served as supervising editor of the Harvard Law Review.

Justice Kagan clerked for Abner Mikva of the U.S. Court of Appeals for the District of Columbia Circuit and for Justice Thurgood Marshall of the Supreme Court of the United States. She also worked as an associate at Williams & Connolly, LLP, as professor at the University of Chicago Law School and at Harvard Law School, and as associate counsel to President Clinton. Justice Kagan also served as deputy assistant to the President for Domestic Policy, as Deputy Director of the Domestic Policy Council, and as the 11th dean of Harvard Law School. President Obama nominated her to serve as the 45th Solicitor General of the United States and then to serve as an Associate Justice of the Supreme Court.

Leading up to Justice Kagan’s confirmation, much was written about the relative lack of a “paper trail” from which one might infer her position on certain issues. Indeed, as a non-judge, she had never authored a court decision or opinion prior to joining the Supreme Court. In addition, Justice Kagan has written comparatively few journal articles and other scholarly papers. As a result, Justice Kagan’s views on the law of intellectual property remain mostly a mystery.

Nonetheless, Justice Kagan certainly does have experience with IP issues. For example, as Solicitor General, she oversaw her office’s handling of the Bilski¹ case. In that case, the Solicitor’s Office supported the Federal Circuit’s “machine or transformation” test for determining patent eligible subject matter under 35 U.S.C. §101 and argued that the petitioner’s claims were directed to an unpatentable method of organizing human activity.  

During her time as Solicitor General, Justice Kagan was also involved in the Able Time² trademark case, in which her office opposed the petitioner’s argument they were free under the Tariff Act to import items bearing a registered trademark, so long as the trademark owner did not yet make the same item.  

Justice Kagan also has experience with copyright issues. While she was Solicitor General, her office opposed certiorari in Cable News Network, Inc. v. CSC Holdings, Inc., 129 S.Ct. 2890 (2009), a copyright case concerning remote-storage DVR technology.In the brief, Justice Kagan’s office supported the lower court’s holding that the technology wouldn’t violate copyright holders’ rights, and argued that the technology was a fair use. Her office also submitted an amicus brief in the Reed Elsevier³ case, arguing that a federal statute requiring registration of a copyrighted work before an action for infringement can be instituted did not limit the subject-matter jurisdiction of the federal courts.

During her time at Harvard Law School, Justice Kagan was a proponent of the school’s Berkman Center for Internet & Society, and was credited with recruiting Lawrence Lessig and other prominent IP scholars.

In sum, while Justice Kagan’s judicial philosophy on intellectual property issues is thus far unknown, there is no question that she has considerable experience in the field.

¹Bilski v. Kappos, 130 S.Ct. 3218 (2010).
²Able Time, Inc. v. United States, 129 S.Ct. 2864 (2009).
³Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237 (2009).  

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.