September 2015

“Happy Birthday” Song Lyrics Not Copyrightable

   On September 22, 2015, a judge of the U.S. District Court of the Central District of California invalidated a copyright claim to the lyrics of the song of “Happy Birthday To You.”  The court held that Warner/Chapelle Music, Inc., successors of Summy Co., was not able to show that the original writers, Patty Hill and Mildred Hill, ever gave Summy Co. rights to the lyrics.

  Chief Judge George King wrote: “The Hill sisters gave Summy Co. the rights to the melody, and the rights to piano arrangements based on the melody, but never any rights to the lyrics.” Judge King’s 43-page decision examined the complex history of the song that goes back more than a century.

   The plaintiff Jennifer Nelson, an independent filmmaker, made a documentary about the song in 2013 and brought the case after Warner filed a claim against a musician who recorded the song during an event in San Francisco.

  It is surprising to many that Warner has received royalties from stage productions, television shows, movies or greeting cards using the lyrics to “Happy Birthday to You,” bringing in approximately $2 million a year, according to some estimates.

   Mark C. Rifkin, one of the plaintiffs’ attorneys, said the plaintiffs will pursue Warner for royalties paid since “at least” 1988, and could also ask the company to repay royalties that have been collected all the way back to 1935.

   For now, because there was no evidence existed that the Summy Co. ever legally obtained the rights to the “Happy Birthday To You” lyrics from whomever wrote it, the song is now considered a public work and is free for everyone to use.

Toyota Filed a Flying Car Patent 

  During the currently heated race to build self-driving cars, Toyota is taking a different approach and looking into another vehicular upgrade: flying.

  As shown in the figure above, the car comprises a unique, stackable wing system that could potentially serve as the flying mechanism for a car. Rather than relying on heavy folding wings that compromises width and visibility of the vehicle when in driving mode, Toyota’s idea is based on making several narrow wings on the roof the car.

  The exemplary four-wing design also has a morphing bottom section that allows the wings to be more closely stacked when not in use. Further, the patent suggests that all four wings would be used during takeoff, while as little as two could keep the vehicle aloft at cruising speed.

  Toyota stated that “these patents represent the brainpower, innovation, diligence and passion of Toyota’s Engineers and Researchers,” suggesting that this idea is only the beginning of what Toyota has in mind for flying cars and the like.


Kristin Kosinski, Esq. of Cislo & Thomas LLP Appointed as Committee Member of the International Trademark Association

Kristin Kosinski, Esq., a partner at Cislo & Thomas LLP, has been appointed to the Alternative Dispute Resolution Committee of the International Trademark Association (INTA).  As a member of the committee, Kristin will be promoting the worldwide use of Alternative Dispute Resolution (ADR), as a cost-effective method of resolving trademark disputes and developing ADR programs, benefits, and surveys. Congratulations Kristin!

If you have any questions regarding ADRs, please contact Kristin Kosinski at our West Los Angeles Office.

Apple Wins Injunction Against Samsung in Federal Circuit for Patent Infringement

The U.S. Court of Appeals for the Federal Circuit handed Apple another victory against Samsung by holding that Apple should have been awarded an injunction barring Samsung from selling products that infringe its patents covering smartphone components, such as iPhone’s slide-to-unlock, autocorrect, and data detection features. Apple Inc. v. Samsung Electronics Co. Ltd, No. 14-1802 (Fed. Cir. Sept. 17, 2015).

The decision has provided an easier hurdle for obtaining injunctive relief against multi-component devices such as cell phones.  Under this decision, to show a “causal nexus” between the infringement and alleged irreparable harm required for injunctive relief, the patent owner only needs to show “some connection” between the patented feature and consumer demand for the infringing product, which can be shown in “a variety of ways.”

For example, “evidence that a patented feature is one of several features that cause consumers to make their purchasing decisions,” “evidence that the inclusion of a patented feature makes a product significantly more desirable,” and “evidence that the absence of a patented feature would make a product significantly less desirable.”

The Federal Circuit stated that the lower court abused its discretion when it denied Apple an injunction after a jury ordered Samsung to pay $120 million in May 2014 for infringing three of Apple’s patents.

This decision was so important that Samsung had a number of major tech corporations, including Google, HTC, and LG, backing it, since the ruling could have wide-ranging effects on the patent landscape.  For example, for devices that have a variety of patents and features, this holding could make it easier for patent holders to intimidate competitors of potential product bans, and giving more leverage during negotiations.

Apple prevailed in a 2-1 holding, which stated that “[t]his is not a case where the public would be deprived of Samsung’s products…. Apple does not seek to enjoin the sale of lifesaving drugs, but to prevent Samsung from profiting from the unauthorized use of infringing features in its cellphones and tablets.”

“This ruling reinvigorates patent holders in keeping companies off the market,” said Rutgers University law professor Michael Carrier. “Apple now has a weapon it can use in two ways: in future litigation with Samsung and others, and in settlement negotiations.”

Samsung called Apple’s injunction request “unfounded” and will ask the full slate of Federal Circuit judges to review Thursday’s decision, and if unsuccessful, is reportedly planning to file a petition in the US Supreme Court by November.

Small or Micro Entity Appellants With Only One Ex Parte Appeal Pending May Expedite Review at Patent Trial and Appeal Board

  In a second pilot program, the Patent Trial and Appeal Board (“PTAB”) will allow small or micro entity appellants with only a single ex parte appeal pending before PTAB to expedite review of that appeal in return for agreeing to streamline the appeal.

  However, under this expedited review, the appeal must not involve any claim subject to a rejection under 35 U.S.C. § 112, and the appellant must waive any request for an oral hearing and must agree to the disposition of all claims, subject to each ground of rejection as a single group.

  The Expedited Patent Appeal Pilot Program (“EPAP”) will allow small or micro entity appellants who streamline their appeals to have greater control over the priority with which their appeals are decided while also efficiently reducing the overall queue of appeals pending before the Board.

  The PTAB has also recently published statistics on the EPAP showing that petitions filed under the EPAP are being decided in an average of two days from the date of filing and that decisions on the appeals are issued in an average of one month from the date of grant of the petition.

  To participate in the pilot program, appellants need only make a certification under Form PTO/SB/441 to file a petition to the Chief Judge under 37 C.F.R. § 41.3. Click here for more information about the pilot program and how to participate.

U.S. Patent and Trademark Office Launches Pilot Program Allowing Owners to “Catch-up” Their Trademark Registration

   On September 1, 2015, the U.S. Patent and Trademark Office (“USPTO”) launched a pilot program that provides some trademark owners the opportunity to amend their identifications of goods or services that would otherwise be beyond the scope of the current identification.

  In other words, the program allows owners to “catch-up” their trademark registrations and close the technology gap. For example, if your company at one time obtained a trademark registration covering “printed newsletters” and now offers “downloadable online subscriptions” or had a registration for “phonograph records featuring music” that is now offered as “downloadable music files,” there is an opportunity to “catch-up” the trademark protection. Here are some other examples of the types of amendments the USPTO will be accepting.

  Since trademarks must be used in commerce on goods and services identified in their federal registration in order for the registration protection to be maintained, trademark owners must first demonstrate such use by filing a declaration of use.  In the declaration of use, the trademark owner indicates the use in connection with all the goods or services between the 5th and 6th anniversary of the registration, then again between the 9th and 10th anniversary of the registration, and then every ten years thereafter.

   Trademark owners should review their trademark portfolio to see if this new pilot program may be of benefit.

Lego Reinforces Its Enforcement Strategy 

   The Danish Lego Group (“Lego”) has gone beyond just protection of its LEGO brand and product trade dress.  Earlier this month, Lego filed a trademark opposition at the Trademark Trial and Appeal Board (“TTAB”) against start-up company IdentiToy, for its application for the mark IDENTIBRICK, on the ground that IdentiToy’s mark was merely descriptive.

   IdentiToy developed technology that allows a computer to interact with toys, including construction toys, that are placed on a tablet’s screen.

   Lego alleges in its Notice of Opposition that Lego, its licensees, and numerous other third-parties frequently use the term “brick” to describe their products and allowing the IDENTIBRICK mark to register without a disclaimer of the term “brick” would harm Lego and Lego’s competitors.

   IDENTIBRICK will most likely be considered a unitary mark, one that is so merged together that the elements cannot be divided to be regarded as separate elements. Under the Trademark Office rules for examining applications, “no disclaimer of an element, whether descriptive, generic, or otherwise, is required” for unitary marks. TMEP 1213.05

  However, the rules do allow voluntary disclaimers, and it appears that Lego is seeking for an express disclaimer of the term BRICK. Contradictorily, Lego owns a registration for BRICKMASTER in connection with “construction toys” but does not disclaim any rights in the word BRICK. Some competitors claim these actions amount to an attempt to monopolize the building block industry, and characterize the company as using trademark law to unfairly harm competitors.

   We will have to wait and see if IdentiToy agrees to the disclaimer in exchange for Lego’s potential withdrawal of the opposition or plays David against Goliath by challenging Lego.


Hashtags in #Trademark Law

   What used to be considered as only a number sign, the hashtag (“#”) has new life as it has become one of the mascots of modern society.  Now even making its way into the courtrooms, a hashtag issue arose in a Motion to Enforce Settlement Agreement (SA) of Eksouzian v. Albanese that settled, and plaintiffs alleged that the defendants violated several provisions of the agreement. Eksouzian v. Albanese, Case No. 2:13-cv-00728-PSG-MAN (C.D. Cal.).

   Both parties make and sell compact vaporizer pens and under the July 2014 settlement agreement, and both parties were to restrict their use of the term “cloud.” The Defendants, who owned the trademark “CLOUD PENS” and “CLOUD PENZ,” may only use “cloud” as part of a unitary mark (for example, “CLOUD PENZ” and “CLOUD PEN”) and Plaintiffs may not use a unitary mark that places “cloud “ next to any of several terms ( “PEN,” “PENZ,” “FUEL,” and “PAD”). A unitary mark is a mark that is so merged together that the elements cannot be divided to be regarded as separate elements.

   Among other allegations, Defendants claimed that Plaintiffs violated their obligation by using the hashtags #cloudpen and #cloudpenz on social media, which allegedly was not avoiding unitary marks that pair “cloud” with “pen” or “penz” as they had agreed.  Some of the acts involved hashtagging images on Instagram and requiring individuals interested in entering a sweepstakes to use those hashtags in their own posts, as shown below.

  The Eksouzian court held that because hashtags are “merely descriptive devices, not trademarks, unitary or otherwise” and  “merely a functional tool,” the Plaintiffs did not breach the settlement agreement when they used #cloudpen or #cloudpenz as hashtags.

   By stating that “hashtags are merely descriptive devices, not trademarks,” the court is calling hashtags essentially incapable of serving as source-indicators.  However, that broad assertion is inconsistent with USPTO practice. Over 70 hashtags have been granted federal registration so far this year, with hundreds of others pending or published.  Some registered marks include KFC’s #HowDoYouKFC and Volvo’s #SwedeSpeak.

   It seems that the Eksouzian court declined the opportunity to really analyze the protectability and enforceability of a hashtagged word or phrase.  Hopefully, other courts will bring light to whether and when hashtags function as trademarks.


Copyright Holders Cannot Demand Take Down of Online Content Without a Good Faith Belief of “Fair Use” Violation

   Earlier this month, the Court of Appeals for the Ninth Circuit denied summary judgment in Universal Music Group, et al. v. Stephanie Lenz, meaning that a full trial will commence to determine if Universal Music Group may be liable for briefly trying to take down a 29-second home video of a baby dancing to the Prince song “Let’s Go Crazy.”

    The Ninth Circuit ruled that copyright holders cannot demand online content that uses their material be taken down without determining whether the use constitutes “fair use.”  Fair use allows portions of copyrighted works to be used for purposes of criticism, comment, research or in other limited circumstances without a license from the copyright holder.

   The case started in a San Jose federal court in 2008 and since then, Universal has spent years trying to dismiss Lenz’s lawsuit. Lenz contends that the media giant and Prince are abusing the Digital Millennium Copyright Act (“DMCA”), which was intended to reduce intellectual property thievery on the Web.

   Judge Richard C. Tallman stated that “copyright holders cannot shirk their duty to consider—in good faith and prior to sending a takedown notification — whether allegedly infringing material constitutes fair use.”

   Attorneys for Universal argued that the company’s handling of the video complied with notice-and-takedown procedure of the DMCA, while attorneys for Lenz contended that “Universal did not give a moment’s thought to whether the video is a fair use.”

    A jury will now have to decide whether Universal had formed a good faith belief that the video violated fair use.

Recent Trademark Trends Provide Guidance for Future Applicants

   The number of trademark applications has more than quadrupled in the last 25 years (82,426 in 1989 v. 336,275 in 2014), due in part to hasty political and pop culture trademark applications such as LEFT SHARK, JE SUIS CHARLIE, ICE BUCKET CHALLENGE, and OCCUPY WALL STREET.

   A recent CAFC (Court of Appeals for the Federal Circuit) decision, M.Z. Berger & Co. v. Swatch AG cautions against hasty Intent-to-Use (ITU) applications.  The court held that lack of proof of “bona fide intent” to use a mark can doom its application.  The plaintiff applied for “IWATCH” for watches, clocks, and personal products.  Swatch opposed the application claiming, among other things, lack of bona fide intent to use the mark in commerce.

    The Board in turn refused registration, holding that “bona fide intent” must be demonstrated objectively (beyond the commonplace sworn statement of intent to use the mark).  In this case, the CAFC applied the TTAB practice requiring documentary evidence that the intent is “form and not merely intent to reserve a right in the mark” upon request by an Examining Attorney or opposer.  To avoid similar missteps, you can stick to the following guidelines:

 – Follow standardized product development processes for each of your product lines and related trademarks in order to provide future ample documentation in your application.
 Gather documentation of the product and trademark development process to proffer in your application, as needed.
–  Be sure to conduct ample trademark searches to see if your application could run into trouble.
–  Be careful not to indicate an unrealistic number of goods and services in your application, as this could draw unnecessary attention and more areas for which you will need to demonstrate a bona fide intent.
 Be careful when filing for marks “just in case.”
 Use this principle to aggressively protect your own marks by opposing potentially infringing applications that do not provide documentary evidence of a bona fide intent to use their mark.

Intellectual Property Licensing Agreements and How Definitions of “Affiliates” or “Subsidiaries” Can Make or Break Your Licensing Agreements

    Associate Joanna Chen, Esq. and Managing Partner Daniel M. Cislo, Esq. of Cislo & Thomas LLP recently published an article entitled “Intellectual Property Licensing Agreements and How Definitions of ‘Affiliates’ or ‘Subsidiaries’ Can Make or Break Your Licensing Agreements” in the August 2015 issue of the Licensing Journal.

  The article discusses the importance of defining terms such as “affiliates” or “subsidiaries” by providing five cases that serve as cautionary tales relating to the legal ramifications of foregoing definitions relating to temporal limitations in IP licensing contracts. The cases in the article are from different jurisdictions and any comparisons between the cases are only to serve as points of consideration when drafting a contract, regardless of jurisdiction.

 Click here to read the full article.