Lombardo et al v. Dr. Seuss Enterprises, L.P., case number 1:16-cv-09974, in the U.S. District Court for the Southern District of New York, is an interesting case for intellectual property practitioners, especially those involved in copyright matters and curious as to how the parody/fair use discussion started in my last post for ILN IP Insider continues to play out.
ILN IP Insider
Oh, Where Cases Like That Will Go: HOW A CEASE AND DESIST LETTER STOPPED THE PLAY BUT STARTED THE SUIT
The mattress business is a competitive one! Trade-marks in the mattress business are valuable!
Sleep Country Canada Inc. is a major mattress retailer in Canada. It is best known for its slogan “Why Buy a Mattress Anywhere Else?”. It owns two Canadian trade-mark registrations for this slogan. This trade-mark, together with its accompanying musical jingle, have been used by Sleep Country Canada in its promotional campaigns since 1994. Those campaigns have included television, radio, print and digital adverting. According to Sleep Country Canada, this slogan is and has been the cornerstone of its brand and marketing for its business. The jingle was ranked as one of Canada’s 25 catchiest jingles and was inducted into the marketing Hall of Legends and the Retail Council of Canada Hall of Fame in 2005.
Suppose that you have an invention disclosure that uses computers and the Internet to carry out transactions that could include financial transactions? When you draft your patent application, is there anything that you can do to avoid having your patent application and resulting issued patent from being interpreted as a covered business method patent? The answer is YES!
In Denmark, certain rules must be observed, if a company wants to turn to customers by electronic means to promote or to sell products and services.
Basically, the company must have the customers consent before the company can send out marketing. If there is no consent marketing through electronic means as text messages or e-mail would be categorized as spam.
The spam rules do not apply if the messages sent has only a service content. However, the message must not contain any other information that may increase sales or awareness of the company. In practice newsletters, and invitations to competitions or events have been categorized as spam.
Unlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue. Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration. Effective February 17, 2017, the United States Patent and Trademark Office (“PTO”) has amended its rules relating to the amount of proof necessary to substantiate current use of the mark for post-registration declarations of use. 37 CFR Part§§ 2.161 and 7.37.
On January 3, 2017, in Paramount Pictures Corp. v. Axanar Productions, Inc. et al., a United States District Court held that Axanar could not rely on a fair use defense during the upcoming trial over whether Axanar infringed Paramount’s copyright in the popular Star Trek television and motion picture franchise. Axanar has an existing twenty-one minute film Star Trek: Prelude to Axanar (“Prelude”) and at least two trailers for a planned full-length feature film (the “Axanar Motion Picture,” and, collectively with Prelude, the “Axanar Works”). Central to the Court’s rejection of that defense was Axanar’s inability to convince the Court that the Axanar Works had the characteristics of the sort of works, such as parodies, that are recognized as deserving of a fair use defense under 17 U.S.C. § 107, as further explained by the United States Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). While seemingly a solid analysis under the applicable U.S. copyrights laws and cases, one perhaps should ask whether a different result could be supported in a parallel copyright universe. (This does, after all, involve Star Trek, where, since the Original Series episode “Mirror, Mirror” episode, examples of parallel universes have existed.) But to get to that parallel universe here, one need not experience a transporter malfunction, nor travel multiple parsecs—one perhaps need only look the United Kingdom (not to be confused with the United Federation) and Section 30A of its Copyright, Designs and Patents Act 1988. Understanding more fully the Axanar case and the Axanar Works will help the parallels emerge.
Industrial design registrations under the Industrial Design Act (the “Act”) are similar to design patents in the US. They protect the features of a product that are visually appealing and not purely utilitarian. They can consist of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form, such as the design of a table or the shape of a computer monitor.
The Canadian Intellectual Property Office (CIPO) published six new practice notices on January 13, 2017 regarding the industrial design registration process under the Act. Each notice came into effect immediately and affects both pending and future design applications. According to CIPO, the changes will improve client service, reduce administration and modernize Canadian practices in order to align those practices with international standards. These changes may also impact registrable subject matter (see below).
How do you plead patent infringement in the United States? Can you survive a motion to dismiss if the defendant challenges the sufficiency of your complaint? What should you do?
Let’s say your client has a United States patent that is believed to be infringed by another party. You do not rely on the client solely for facts, but conduct your own investigation to meet a pre-filing due diligence. You review the patent, prior art, and file history for claim construction. You also review the accused infringing device both independently and with your client. You prepare claim charts for all claims of the patent and apply elements of the claims to the accused infringing device in the claim chart. You may even obtain an opinion of counsel that is reasonable, comprehensive, and competent such that a reasonable litigant could believe that an infringement claim could succeed based on the opinion. This pre-filing due diligence will usually meet your obligation under Rule 11 of the Federal Rules of Civil Procedure.
In the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive. If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register. So, how do you determine if your mark is descriptive and which register should you seek registration?
The main register for most trademarks in the United States is what is called the “Principal Register”. A trademark that is registered on the Principal Register has certain advantages including using the registration symbol ®, protection against registration of a confusingly similar mark (likelihood of confusion), presumed notice to the public of a claim of ownership of the mark, a legal presumption of ownership of the mark and the exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration, establishing a date of constructive use of the mark as of the filing date of the application, filing suit in federal court to bring an action concerning infringement, preventing importation of infringing foreign goods by filing the registration with the U.S. Customs and Border Protection, incontestability of the registration, and using the registration as a basis to obtain registration in foreign countries.
SMOKE SIGNALS FROM SPECIMEN OF USE SUPPORT REGISTRATION REFUSAL FOR “HERB” SALES DESCRIBED IN APPLICATION
In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.” Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of use and web site home page contained enough evidence for the examiner to determine that he was indeed selling the federally banned substance. In re Morgan Brown, Ser. No. 86/362,968 (TTAB July 14, 2016).