Weekly IP Takeaways

In IP Blog

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a significant opinion from the Ninth Circuit on product design trade dress and functionality, the Ninth Circuit held that product design trade dress for Herman Miller’s EAMES chair was not functional (either utilitarian or aesthetic), and that the district court’s determination that Herman Miller’s AERON chair was functional required reversal because of a jury instruction that inaccurately and overbroadly defined functionality. Finally, the Ninth Circuit reversed the district court on trade dress dilution for the EAMES chair, finding that Herman Miller did not establish fame among the general consuming public. The evidence found to be insufficient was insufficient advertising expenses, not enough social media followers, and relatively obscure publications in which the chair was advertised.

2. This Takeaway pertains to the latest twist regarding two recent Takeaways here (Takeaway No. 1) and here (Takeaway No. 1), regarding whether publicly posting a photograph on Instagram triggers a sublicense provision wherein content posted to a public Instagram account results in a non-exclusive, transferable license being granted to Instagram that allows other Instagram users to access the content and direct a web browser to retrieve the content for incorporation into, for example, an article the web, via a sublicense from Instagram. Now, Judge Wood, who previously ruled against a photographer posting a photograph on Instagram, just granted a motion for reconsideration in which she did not change her view that publicly posting a photograph on Instagram gives Instagram a license to further sublicense the photograph. The judge, however, reversed her prior decision because the question of whether Instagram’s terms and conditions, in a sense, automatically sublicense the work to others, or requires additional steps for a sublicense to be granted, was a question of contract interpretation that could not be resolved on a motion to dismiss. This issue remains in flux; although, this new order seems to clarify that the sublicense may not be automatic, which would be more consistent with Judge Wood’s colleague’s recent opinion on this issue.

3. In a well-reasoned opinion from the Federal Circuit, the Court reversed an award of attorneys’ fees by Magistrate Judge John E. McDermott of the Central District of California. In a case regarding spill-proof sippy cups, which originally began as a trademark infringement and unfair competition case, the district court allowed the plaintiff to amend its complaint to add another trademark infringement claim, a trade dress infringement claim, and a utility patent infringement claim. At the same time, the defendant sought to put the utility patent into an inter partes review (IPR), which was ultimately granted. The plaintiff voluntarily dismissed the non-patent claims, secured its proposed claim construction in the district court, but saw the Patent Trial and Appeal Board (PTAB) invalidate all of the challenged claims of the patent. The plaintiff then dismissed its patent infringement claim. The defendant moved for an exceptional case determination and award of attorneys’ fees, which was granted, largely based on the district court’s determination that the claims asserted were substantively weak, and thus, supportive of an exceptional case determination under Octane Fitness. On appeal, the Federal Circuit reversed, noting that the trademark and trade dress claims were permitted by the district court via amendment, and were not deemed to be futile (which would conflict with the substantive weakness sufficient to support an exceptional case determination). The Federal Circuit also noted that the district court never actually made any findings on the weakness of the plaintiff’s position on patent invalidity, even noting that the district court adopted plaintiff’s proposed claim constructions. Overall, the Federal Circuit found the district court record insufficient to support a fee award and revered the award.