January 2017

Little Caesar’s “Pizza! Pizza!” and Other “X! X!” Marks Do Not Quality as Family of Marks

Image: http://www.littlecaesars.com/

Takeaway: Trademark Trial and Appeal Board held that Little Caesar’s collection of repeated term marks does not rise to the level of “family of marks” and granting such status to Little Caesar’s collection of marks would be giving excessively broad rights.

In In re LC Trademarks, Inc. (TTAB December 29, 2016), the Trademark Trial and Appeal Board (“TTAB”) held that Little Caesar’s failed to show that it owned a “family of marks” with its collection of repeated term marks, such as “PIZZA! PIZZA!” and “DEEP! DEEP! DISH PIZZA.”

In order to own a “family of marks” the trademark owner show that its “family”: (1) has a recognizable common characteristic, (2) that it is distinctive, and (3) that this distinctive and recognizable common characteristic has been promoted in such a way as to create “recognition among the purchasing public that the common characteristic is indicative of common origin of the goods or services.”

For a descriptive mark to become distinctive, at least five years of substantially continuous and exclusive use of the mark may be sufficient. However, in Little Caesar’s case, the mark “DEEP! DEEP! DISH PIZZA” had not been used for at least five years. Further, the Board held that it could not acquire distinctiveness by being a part of a family of marks because the Board refused to acknowledge Little Caesar’s collection of marks as a family of marks. The issue lies in the fact that the terms being repeated were differing and distinctive.

Further, the Board did not find sufficient evidence that showed that the public has not associated the common characteristic of the alleged “family of marks” as a source indicator.

Therefore, the Board has reconfirmed that establishing a “family of marks” is neither expeditious nor simple.

Federal Circuit Exemplifies How Divided Infringement of Method Claim Can Be Avoided

Takeaway: The Federal Circuit refused to reconsider Medgraph, Inc. v. Medtronic, Inc. even in light of a decision in Akamai Technologies Inc. v. Limelight Networks Inc., which established new conditions where direct infringement can be found when more than one party performs steps of a patent, stating that remand was not appropriate because the outcome would be the same.Medgraph, Inc. v. Medtronic, Inc., No. 2015-2019, 2016 U.S. App. LEXIS 22067 (Fed. Cir. Dec. 13, 2016) (Before Lourie, Plager, and Taranto, J.)

The Federal Circuit recently decided to deny the remanding of Medgraph, Inc. v. Medtronic, Inc., even after applying the court’s Akamai V en banc decision on divided patent infringement.

According to the court’s Akamai V en banc decision, divided or joint patent infringement may be found if there is attribution, such that “when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”

Specifically, in view of the new test for divided infringement in Akamai V, “Medgraph argue[d] that Medtronic conditions patients’ and/or doctors’ participation in the CareLink system, or receipt of the benefit to the patients and doctors of remote access to patient information, upon their performance of the claimed method steps and establishes the manner or timing of that performance.” However, the court determined that Medtronic did not “condition participation in or receipt of a benefit from use of” the CareLink equipment because, the necessary step of detaching the measuring device from the patient after each measurement of glucose was not offered in  or incentivized by the CareLink equipment as required by the claims.  Quite the contrary, the device is better suited for continuous glucose monitoring.

Therefore, the Federal Circuit rejected Medgraph’s argument for remand and further concluded that “Medtronic was not liable under a theory of indirect infringement [either], because indirect infringement is predicated on direct infringement… [and thus] … the outcome would, again, not change if [the Federal Circuit were] to vacate and remand. ”

Live Streaming Issues with the NFL

Takeaway: When Antonio Brown of the Pittsburgh Steelers celebrated the win at the AFC playoff game through Facebook Live, he was violating contractual agreement regarding broadcasting rights. Brown will be facing a sizable fine for this breach of the NFL social media policy.

Image: http://www.steelers.com/

On January 15, right after the Pittsburg Steelers upset the Kansas City Chiefs, Antonio Brown celebrated the win by going on Facebook Live and almost a million viewers watched 17 minutes of real-time celebration, which was later deleted.

Unfortunately, Brown’s contract with the NFL had a social media policy clause that prohibited any NFL personnel from participating in social media beginning 90 minutes before the game and running through to the end of the mandatory post-game press conference.  The rights of such broadcasts were given exclusively to NFL’s broadcast partners. Brown’s actions may affect future contractual agreements.

Further, the content of the live stream was also troubling because Coach Mike Tomlin’s remarks were full of expletives and aggression toward the team.  Both Coal Tomlin and Antonio Brown issued apologies.

To avoid live streaming legal issues, even as an average person, the following are good guidelines to follow:

  1. Regarding privacy and right of publicity, although the laws differ from state to state, as a general rule, seek permission from anyone you feature in a live stream video, especially if the video is for commercial use.
  2. Regarding location, you must have the right to be on the property where you are live streaming. As for commercial live streaming, you may also need to obtain a permit to stream/record. If you are being sponsored for commercial use, that needs to be disclosed as well.
  3. If live streaming is used for commercial purposes, any IP law restrictions or privacy law restrictions apply to the standard of a broadcaster.

If users of streaming services violate any copyright laws, the streaming service is protected under the Safe Haven provisions of the Digital Millennium Copyright Act of 1998 (DMCA) and thus, the infringing users are personally liable.

Supreme Court Denied Petition To Reverse Broad Personal Jurisdiction for ANDA Filers

Takeaway: The Supreme Court agrees with the Federal Circuit that a company that files for an Abbreviated New Drug Application (“ANDA”), which is an application for generic drug approval, is subject to personal jurisdiction in any state in which the ANDA filer seeks approval to market its generic drug.

The Supreme Court denied Mylan Pharmaceuticals’ petition for certiorari to reverse the Court of Appeals for the Federal Circuit’s holding that an ANDA filer satisfies the minimum contacts requirement for specific personal jurisdiction once it files an ANDA in that particular state.

The Federal Circuit reasoned that, in the case for patent infringement, the formal act of filing an ANDA indicates the intent to engage in the allegedly infringing activities of marketing and selling the generic drug product in the state.

In the petition, Mylan tried to argue that the Federal Circuit’s ruling would have a “substantial chilling effect on generic activity” such that generics are subject to all jurisdictions, in terms of personal jurisdiction, where they sought approval to market their ANDA products.  However, the Supreme Court did not find Mylan’s argument persuasive and denied the petition without comment.

Federal Circuit Revisits KSR Obviousness Analysis

Takeaway: The Federal Circuit held that if a person having ordinary skill in the art is “able to fit the teachings of multiple patents together like pieces of a puzzle” then it would have been obvious to combine and therefore would be invalidated as obvious in light of the prior art references.

In ClassCo, Inc. v. Apple, Inc., the Federal Circuit upheld a Patent Trial and Appeal Board (“PTAB”) decision that invalidated several claims in ClassCo’s patent, U.S. Patent No. 6,970,695 (the ‘695 Patent), finding that it would have been obvious for a person having ordinary skill in the art to combine prior art references, i.e., the Fujioka patent with the Gulick patent.

On appeal, ClassCo argued that according to the Supreme Court’s decision in KSR v. Teleflex, the obviousness standard for combining prior at is such that it “only unites old elements with no change to their respective functions.”

However, the Federal Circuit held that the PTAB applied the rationale of KSR in that if a person having ordinary skill in the art is “able to fit the teachings of multiple patents together like pieces of a puzzle,” it qualifies as obvious to combine as well.

Further, the Federal Circuit agreed that the PTAB did err in dismissing some of ClassCo’s evidence for nonobviousness in terms of secondary considerations. However, the Federal Circuit ultimately found that such evidence was not dispositive and upheld the PTAB’s decision.

“The Krusty Krab” Wins In Trademark Battle

Takeaway: Known for being in the popular cartoon series “SpongeBob SquarePants,” the Krusty Krab restaurant, a famous fictional landmark in the series, was entangled in a trademark dispute. A non-fictional company, IJR Capital Investments filed an intent-to-use trademark application for “THE KRUSTY KRAB” for restaurant services and Viacom, the parent company of Nickelodeon, filed a complaint in the Southern District of Texas for trademark infringement and dilution and was granted summary judgment for trademark infringement.

Viacom, the parent company of Nickelodeon first filed a cease-and-desist letter to IJR Capital Investments for filing an intent-to-use trademark application (Serial No. 86470477) for the mark THE KRUSTY KRAB for “restaurant services.”  However, IJR persisted with the application and planned to open a restaurant under that name.  Viacom filed a complaint in the Southern District of Texas for trademark infringement and dilution and moved for summary judgment, which the court recently granted in part.  The court granted summary judgment for trademark infringement.

Even though Viacom has no federal trademark registration or application for “The Krusty Krab,” the court held that the mark was protectable under common-law trademark law because Viacom had presented sufficient evidence that the mark acquired distinctiveness.  Showing how popular the television show was, Viacom successfully showed that such elements of its popular television show, like The Krusty Krab, should be afforded trademark rights.

The court cited “Kryptonite,” (a fictional radioactive compound in the Superman series) and the “Daily Planet” (a fictional newspaper where Superman works) as “staple[s] of the Superman character and story” and “regularly appeared on licensed consumer merchandise over the years” such that they were afforded trademark rights.  DC Comics v. Kryptonite Corp., 336 F. Supp. 2d 324 (S.D.N.Y. 2004); DC Comics v. Powers, 465 F. Supp. 843 (S.D.N.Y. 1978).

The Court had some fun with the footnotes as well, quoting SpongeBob: “You don’t need a license to drive a sandwich” and predicting that SpongeBob’s reaction to Viacom’s lack of briefing on certain claims as: “Aw, tartar sauce!”  IJR’s owner Javier Ramos stated that he plans on appealing.

Inter Partes Review May Be Applying A Narrow “Broadest Reasonable Interpretation” In Application

Takeaway: Although the Patent Trial and Appeal Board (“PTAB”) is to construe patent claims under the “broadest reasonable interpretation,” in practice, the PTAB does not allow the broadest “possible” interpretation and seems to be limiting the claim’s meaning in view of the prosecution history, which is in line with how the courts perform claim construction as well.

Last year, in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), the Supreme Court stated that the PTAB was to continue construing patent claims based on the broadest reasonable interpretation, even though the district courts review claim construction under an ordinary and customary meaning.

It has been generally assumed that the PTAB’s broadest reasonable interpretation would be at least as broad, if not broader, than the district courts’ interpretation.

However, since Cuozzo, the Federal Circuit seems to suggest that interpretation under “broadest reasonable interpretation” takes patent prosecution into consideration even though traditionally the “broadest reasonable interpretation” does not require such consideration. The Federal Circuit, in reviewing the PTAB decision in  John D’ Agostino v. Mastercard International Inc., 2016 U.S. Appl. LEXIS 23025 (Fed. Cir., December 22, 2016), found the specification described several embodiments, but the court relied upon statements made by the patentee during prosecution and reexamination, ultimately allowing the claim to overcome patentability issues based on the cited prior art.

Therefore, although the two standards are far from identical, the PTAB should now be more inclined to consider statements made in prosecution under a broadest reasonable interpretation such that the Federal Circuit would likely agree with such use.