Weekly IP Takeaways

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

1. In a recent decision on antitrust and unfair competition claims brought by Apple and Intel against a group of patent assertion entities (aka patent aggregators or patent trolls), the Northern District of California dismissed the claims with leave to amend. In essence, Apple and Intel’s claims are an attempt to push back on entitles aggregating large patent portfolios of allegedly weak patents, which are then aggressively enforced through license demands or litigation. The Northern District of California typically requires detailed pleadings in a complaint for antitrust claims, and in this case, it found that Apple and Intel’s claims did not define the affecting market specifically enough, and that the allegations of anticompetitive conduct were conclusory and no plausible. Certainly, patent aggregators/patent trolls, at times, attempt to shake down large companies with an aggressive patent attack. Antitrust and unfair competition claims represent an interesting way to push back on such attacks, but the antitrust claims, in particular, need to be pled with details.

2. As previously discussed in this blog (Takeaway No. 2), the Trademark Modernization Act is an important, and unbelievable, bipartisan piece of legislation intended to streamline and strengthen the U.S trademark system. In part, the goal of the Act is to reduce fraudulent trademark applications (often by applicants from China) that have the potential to injure U.S. businesses by interfering with U.S. businesses’ ability to secure trademark registrations where fraudulent trademark specimens and allegations of use are made. The bill also contains a mechanism to more easily challenge and purge bogus trademarks. Recently, a markup in the House Judiciary Committee introduced language into the bill that attempts to protect decisions of the Trademark Trial and Appeal Board from issues plaguing the Patent Trial and Appeal Board in connection with the Arthrex line of cases, as discussed here (Takeaway No. 1). Whether or not this bill becomes law, the Trademark Office has already substantially increased its scrutiny of trademark specimens to combat the fraud.

3. In an interesting case out of Connecticut, rapper 50 Cent filed a lawsuit against another artist, known as Rick Ross, in which 50 Cent asserted that Ross’s use of a significant portion of the music from a 50 Cent song violated 50 Cent’s right of publicity under Connecticut law. A key fact in the case was that 50 Cent did not own the copyright on the recording – the record company did. The District of Connecticut granted summary judgment against 50 Cent. The Second Circuit Court of Appeals affirmed, finding that 50 Cent’s right of publicity rights were expressly and impliedly preempted by the federal Copyright Act. In other words, the state law right of publicity claim, as asserted by 50 Cent, was not seeking to vindicate rights materially different than those protected by the Copyright Act, and would, in fact, interfere with or frustrate the purposes of the federal Copyright Act. Essentially, 50 Cent’s right of publicity claim was a disguised copyright infringement claim, and was asserted because 50 Cent did not own the copyright.