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Litigation News and Analysis • Legislation • Regulation • Expert Commentary VOLUME 25, ISSUE 12 / SEPTEMBER 26, 2018

PATENT 5 Federal Circuit sides with Music Modernization Act gets Senate approval DuPont, Archer Daniels By Patrick H.J. Hughes in plastics patent fight DuPont Co. v. Synvina CV The U.S. Senate on Sept. 18 unanimously passed the Orrin G. Hatch Music (Fed. Cir.) Modernization Act of 2018, which claims to “provide clarity with respect to, 6 Patents for drug to help MS patients walk and to modernize, the licensing system for musical works.” deemed obvious Acorda Therapeutics v. Roxane Music Modernization Act of 2018, 2017 CONG Laboratories (Fed. Cir.) US S 2823 (Sept. 18, 2018). In addition to approving several amendments COPYRIGHT to the Copyright Act, the Senate agreed to 7 Copyright Board defeats SoundExchange’s appeal name the law after the retiring Hatch, a Utah over webcasting rates Republican who introduced the latest version SoundExchange v. Copyright of the bill earlier this year with Sen. Lamar Royalty Board (D.C. Cir.) Alexander, R-Tenn. 8 Porn producer may not reveal “With this bill, we are one step closer to historic alleged downloader’s identity, judge says reform for our badly outdated music laws,” Hatch said in a statement after the Senate vote. Malibu Media v. Doe (D. Md.) Hatch, a songwriter on the side, has a platinum Republican Sen. Orrin Hatch REUTERS/Joshua Roberts 9 Music groups blame record. Copyright Office’s lag time options for digital music companies and ways of in Supreme Court dispute The House of Representatives passed the bill verifying that songwriters are compensated for Fourth Estate Public Benefit earlier this year. The legislation now goes back their works. Corp. v. Wall-Street.com (U.S.) to the House for approval of the Senate Another section, called the Allocation for Music amendments and then to President Donald TRADEMARK Producers Act, or Amp Act, allows the royalty Trump. 10 PTO asks justices to keep ban distribution organization SoundExchange to on ‘scandalous’ trademarks According to the Congressional Record, the directly compensate music producers and Iancu v. Brunetti (U.S.) part of the bill called the Musical Works engineers. 11 High court should reject Modernization Act provides blanket license CONTINUED ON PAGE 16 review of ‘first ever’ circuit split, trademark holder says Mission Product Holdings v. Tempnology (U.S.) 13 Wall Street Journal imposter’s EXPERT INTERVIEW social media presence dilutes mark, suit says Dow Jones & Co. v. Bourbon Q&A: Copyright expert Christopher Beall (N.Y. Sup. Ct.) 14 TTAB denies Ask.com on the European Union Copyright Directive search engine’s request to cancel ‘Askbot’ trademark Christopher P. Beall from Fox Rothschild LLP clarifies what the European Parliament’s IAC Search & Media Inc. v. recent vote for the EU Copyright Directive means for copyright laws in the digital age. Askbot S.p.A. (T.T.A.B.) SEE PAGE 3 42089391 TABLE OF CONTENTS Westlaw Journal Intellectual Property Published since August 1989 Copyright Music Modernization Act gets Senate approval...... 1 Director: Nadia Abadir Editor: Expert Interview Patrick H.J. Hughes Q&A: Copyright expert Christopher Beall on the European Union Copyright Directive...... 3 [email protected] Patent: DuPont Co. v. Synvina CV Desk Editors: Federal Circuit sides with DuPont, Archer Daniels in plastics patent fight (Fed. Cir.)...... 5 Jennifer McCreary, Elena Neuzil, Abbie Sarfo, Maggie Tacheny Patent: Acorda Therapeutics v. Roxane Laboratories Graphic Designers: Patents for drug to help MS patients walk deemed obvious (Fed. Cir.)...... 6 Nancy A. Dubin, Ramona Hunter Westlaw Journal Intellectual Property Copyright: SoundExchange v. Copyright Royalty Board (ISSN 2155-0913) is published biweekly by Copyright Board defeats SoundExchange’s appeal over webcasting rates (D.C. Cir.)...... 7 Thomson Reuters. Copyright: Malibu Media v. Doe Thomson Reuters Porn producer may not reveal alleged downloader’s identity, judge says (D. Md.)...... 8 175 Strafford Avenue, Suite 140 Wayne, PA 19087 Copyright: Fourth Estate Public Benefit Corp. v. Wall-Street.com 877-595-0449 Music groups blame Copyright Office’s lag time in Supreme Court dispute (U.S.)...... 9 Fax: 800-220-1640 www.westlaw.com Trademark: Iancu v. Brunetti Customer service: 800-328-4880 PTO asks justices to keep ban on ‘scandalous’ trademarks (U.S.)...... 10 For more information, or to subscribe, please call 800-328-9352 or visit Trademark: Mission Product Holdings v. Tempnology legalsolutions.thomsonreuters.com. High court should reject review of ‘first ever’ circuit split, trademark holder says (U.S.)...... 11 Reproduction Authorization Authorization to photocopy items for internal Trademark: Dow Jones & Co. v. Bourbon or personal use, or the internal or personal Wall Street Journal imposter’s social media presence dilutes mark, suit says (N.Y. Sup. Ct.)...... 13 use by specific clients, is granted by Thomson Reuters for libraries or other users regis- Trademark: IAC Search & Media Inc. v. Askbot S.p.A. tered with the Copyright Clearance Center TTAB denies Ask.com search engine’s request to cancel ‘Askbot’ trademark (T.T.A.B.)...... 14 (CCC) for a fee to be paid directly to the Copyright Clearance Center, 222 Rosewood Trade Secrets: E-Trade Financial Corp. v. Pospisil Drive, Danvers, MA 01923; 978-750-8400; E-Trade wins TRO against ex-worker accused of stealing clients (N.D. Ill.)...... 15 www.copyright.com. Case and Document Index...... 17

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By Patrick H.J. Hughes

Thomson Reuters: On Sept. 12, European the display of copyright-protected content for content-recognition procedures in Parliament members voted in favor of two without permission from (or payment to) the Article 13, will have what some might controversial parts of the European Union rights holder. The provision is a governmental think of as the perverse impact of locking Copyright Directive. What are those articles imposition of the kind of content-recognition in the dominance of the existing internet and what are the issues at stake? measures that Google’s YouTube privately behemoths because of the stunningly huge Christopher Beall: The two controversial conducts against music and video content financial cost of creating effective content- provisions, Articles 11 and 13, are parts of a that YouTube users upload to that platform. recognition and user-appeal procedures. larger package of measures in the Directive on Copyright in the Digital Single Market, The 2016 draft met with strenuous opposition from which is an outgrowth of years of consultation internet libertarian advocates, and indeed, the measure and study by EU officials and stakeholders actually failed initially when it was brought to a vote concerning copyright issues in the internet age. in the European Parliament this past summer. Article 11, pejoratively labeled the “link tax” by opponents, implements a copyright right for The provision goes beyond the affirmative Google employs thousands upon thousands news publishers that gives press publishers notice-and-takedown approach of the U.S. of employees to implement its content- the right to control republication of their copyright law, and instead implements a recognition mechanisms for YouTube and news coverage on the internet, including negative automatic-takedown approach its other platforms, and that kind of cost will as against the use of “snippets” of a news driven by automatic algorithms that identify likely ensure that no new competitors could story on a third-party news aggregator’s site. a rightsholder’s content when it is included in arise to challenge the dominance of Google Although this article was amended during a posting. The article includes a requirement or Facebook’s platforms for user-generated the legislative process to create an exception that countries establish mechanisms that content. to the “publisher’s right” for the use of a would allow opportunities for users to TR: When and why were these articles one-word hyperlink to the publisher’s news challenge the automated blocking of their proposed? uploads through appeal procedures. story, it is clear that this article will require CB: The implementation of the “publisher’s news aggregators — such as Google News The larger debate around these two articles right” and the “content-recognition regime” — to pay a license fee to a news publisher has been characterized as a battle between in Articles 11 and 13 stem from years upon if the aggregator displays a one- or two- Google and the creative community, as an years of handwringing in Europe over what is sentence snippet or headline from the news effort to push back against what is seen as seen as the debilitating impact of the internet publisher’s site. the “evil empire” dominance of American on traditional modes of publishing. internet giants. Article 13, which gets a separate antagonistic For newspaper and magazine publishers, moniker of the “upload filter,” requires While it is true that Google and other the arrival of the internet has coincided with internet platforms that host third-party American internet companies lobbied a decimation of those publishers’ revenues content — such as Facebook, Instagram, against passage of the directive, it is also and ultimately the closures of vast swaths of Twitter and the like — to impose “content the case that the requirements of the formerly vibrant news publications. recognition technologies” that would prevent directive, and particularly the requirement The publisher’s right in Article 11 is actually an EU-wide broadening of a right recognized in Germany and Spain several years ago, where national courts in those countries recognized a right by news publishers to control the use Christopher P. Beall is a partner with Fox Rothschild LLP. An of snippets about their news stories being accomplished trial attorney, he represents news, publishing, entertainment and other media clients in intellectual property matters. His extensive published by third-party news aggregators trial experience ranges from copyright infringement to civil rights claims, such as Google News. with nine full trials in the last 10 years. He also teaches copyright law at the Sturm College of Law at the University of Denver and is a frequent The European view held that such snippets speaker on First Amendment and copyright issues involving the news were siphoning away readership from the media. news sites from which the snippets were being collected.

© 2018 Thomson Reuters SEPTEMBER 26, 2018 n VOLUME 25 n ISSUE 12 | 3 However, EU studies of the results of the In fact, though, the “fuss” is unlikely to go should not be thought of as a landslide Spanish and German measures actually away. Wyclef Jean’s criticism, as well as because the legislative process is not yet concluded that the imposition of a publisher’s others’, of the “upload filter” requirements finished. right for news snippets in those countries in Article 13 highlight a fundamental TR: What is planned for the future of the EU in fact resulted in the elimination of any disagreement about how broad the copyright Copyright Directive? aggregation — Google News simply stopped protection — or content monopoly — that aggregating news content in those countries. a content creator ought to have around CB: Under the EU’s legislative process, the vote was an intermediate step, albeit a The local news publishers therefore received the content that she or he creates. Jean’s view emanates from a recognition that all significant one, towards final implementation no benefit from the publisher’s right because of the principles announced in the directive. there was no third-party aggregation from artists build on prior work for their own which to receive any revenue. And, perhaps new creations. This pattern is most evident The directive is now subject to negotiations predictably, print publications in Spain and in the context of music sampling for rap between the European Commission, the Germany, as elsewhere throughout Europe, and other genres, but it is equally apparent Council of the European Union, and the and indeed throughout the world, continued in the everyday use that nonprofessional European Parliament, with a later vote to lose revenue and many continued to cease users of Instagram make of the Instagram anticipated in January 2019 on the results of operation. feeds, where they post memes that parody those negotiations. or satirize events of the day. As Jean and Only if the directive is then approved again The current version of the directive was first others appreciate, the mandatory imposition would the measure be sent to member states published for review in 2016, following a of content-recognition filters will lead to the within the EU for each national legislature deliberative process with stakeholders that destruction of everyday occurrences such as to craft country-specific revisions to each encompassed years of meetings, symposia, a Twitter meme making fun of Chancellor country’s copyright laws so as to implement and debates. Angela Merkel or a spoof of Carlo Berlusconi’s the principles announced in the directive. The 2016 draft met with strenuous opposition latest romantic adventures. In other words, there is a long road to go from internet libertarian advocates, and On the other side, established content before the “link tax” and “upload filter” indeed, the measure actually failed initially creators (or more accurately, well-heeled become law. when it was brought to a vote in the European content owners) like Sir Paul McCartney Parliament this past summer. praise the content-recognition provisions in TR: What impact could the Copyright Following that defeat, proponents of the Article 13 on the grounds that it will prevent Directive have on the rest of the world? directive made various tinkering changes unauthorized taking of their existing works. CB: Although final, formal implementation to Articles 11 and 13, such as providing for While we should not cast aspersions on the of the directive into national law in Europe an exception for one-word hyperlinks and sincerity of these arguments, it is in fact true is a long way off, the impact of the directive for an appeal procedure against automatic that the real result of the content-recognition outside the United States is likely to be seen content-recognition takedowns. regime will be to increase the flow of money, quite broadly, if only because the European through revenue sharing, to content owners. These revisions, and intense lobbying from Parliament is the broadest legislative For people such as McCartney who actually the content-creative community, led to a organization in the world. own the copyright in the works they create, reversal of this summer’s defeat and the In the United States, however, the legislation the content-recognition licensing streams victory on Sept. 12 for the proponents of the is unlikely to have much direct impact on will mean a potentially significant increase in legislation. American law. income. TR: Wyclef Jean urged the European The current Fair Use Doctrine that is TR: What was the final vote? Was this a Parliament to reject Article 13 of the directive, enshrined in the U.S. Copyright Act, as landslide? while Sir Paul McCartney praised that article. well as the First Amendment principles Some predict disaster while others are happy. CB: The final vote was 438 in favor, 226 implemented in American copyright law Why the disparity? against, with 39 abstentions. This outcome that prohibit copyright control of facts and was a remarkable reversal of the initial vote CB: The principal advocate for the directive ideas, would make the principles of the “link in July, when there were 318 votes against the at the European Parliament, MEP Axel Voss tax” unworkable in the United States. directive, 278 in favor and 31 abstentions. of the European People’s Party, has pooh- As for the “upload filter” procedures, those poohed the doomsday predictions about The 160-vote swing in favor of the directive measures are already in place on a private this legislation, saying at a press conference was a result, in part, of a significant number basis for sites such as YouTube. after the Sept. 12 vote that “once the dust of absences in the Parliament, but mostly, Although the U.S. Congress has occasionally has settled, the internet will be as free as it is it reflected the effectiveness of the political flirted with potential revisions to the Digital today, creators and journalists will be earning lobbying by MEP Voss and others, as well Millennium Copyright Act’s notice-and-take- a fairer share of the revenues generated by as the continuing antipathy that many down and the safe-harbor provisions, there their works, and we will be wondering what European officials and bureaucrats have seems to be little appetite in the current all the fuss was about.” against American internet companies. political climate for major revisions of these While certainly overwhelming, at 62 percent mechanisms in U.S. law. WJ of the votes cast, the victory for MEP Voss

(Reuters) – A federal appeals court on Sept. 17 invalidated a patent owned by renewable chemicals company Synvina CV, handing a victory to its rivals DowDuPont Inc. and Archer-Daniels-Midland Co.

E.I. du Pont de Nemours & Co. et al. v. Synvina CV, No. 2017-1977, 2018 WL 4390796 (Fed. Cir. Sept. 17, 2018). The U.S. Court of Appeals for the Federal Circuit said key claims in a patent owned by Synvina on a process for making a compound used in biodegradable plastic were invalid on obviousness grounds. The 3-0 ruling reversed a determination by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board. Amsterdam-based Synvina, a joint venture of the European chemical companies BASF and Avantium, owns a U.S. patent on a process for making a compound known as 2,5-Furandicarboxylic acid, or FDCA. Derived from sugars, FDCA can be used to create renewable, biodegradable plastic. The U.S. Department of Energy has called REUTERS/Tim Shaffer FDCA a critical compound for forging a “green” chemical industry. In the Sept. 17 decision the Federal Circuit sided with DuPont and Archer Daniels and DuPont are partners in the development of Archer Daniels on both issues. sustainably sourced biomaterials and compete with Synvina in the production of FDCA. Noting that DuPont and Archer Daniels had built an FDCA production plant in Illinois, the court said they had “concrete plans” for activity that In 2015 DuPont and Archer Daniels jointly asked PTAB to invalidate the created a substantial risk of future infringement. Synvina patent on the grounds that the production process it described was obvious in light of prior art. Turning to the merits, the court agreed with Archer Daniels and DuPont that the Synvina patent was invalid because the FDCA production The board issued a final decision in 2017 that upheld the validity of the process it described was obvious in light of earlier disclosures in patent. E.I. du Pont de Nemours & Co. v. Furanix Tech. BV, No. IPR2015- scientific articles and patent applications. 01838, 2017 WL 10256098 (P.T.A.B. Mar. 3, 2017). “[T]his case involves a strong case of obviousness based on very close Dupont and Archer Daniels appealed to the Federal Circuit, arguing prior art and weak evidence of nonobviousness,” Circuit Judge Alan PTAB’s findings were based on a flawed claim construction. Lourie wrote on behalf of a panel that also included Circuit Judges Synvina urged the court to affirm PTAB’s determination, saying it was Kathleen O’Malley and Raymond Chen. WJ supported by substantial evidence. (Reporting by Jan Wolfe) Synvina also argued Archer Daniels and DuPont lacked standing to Related Filings: appeal PTAB’s decision because they had not suffered an actual or Opinion: 2018 WL 4390796 imminent injury. Synvina said that, because it had not sued them for PTAB decision: 2017 WL 10256098 infringement, they could only point to speculative future harm.

By Patrick H.J. Hughes A split panel of the highest patent court has ruled that Acorda Therapeutics Inc.’s patents for its drug Ampyra are invalid as obvious despite the medication’s success in helping improve multiple sclerosis patients’ mobility.

Acorda Therapeutics Inc. et al. v. Roxane As a result of its research, Acorda filed The Patent Trial and Appeal Board ruled Laboratories Inc. et al., Nos. 2017-2078 and provisional patent applications in 2004, against the challenge in 2017. Coal. for 2017-2134, 2018 WL 4288982 (Fed. Cir. followed by a new drug application for Affordable Drugs LLC v. Acorda Therapeutics Sept. 10, 2018). Ampyra. Inc., Nos. IPR2015-1850, IPR2015-1853, In a 2-1 decision, the U.S. Court of Appeals After the Food and Drug Administration IPR2015-1857 and IPR2015-1858, 2017 WL for the Federal Circuit agreed with a approved the drug in 2010, sales of Ampyra 950736 (P.T.A.B. Mar. 9, 2017). lower court that a “blocking patent” ruled skyrocketed, earning Acorda nearly $1 billion However, Roxane and the other would-be out secondary considerations, such as in net income from $1.7 billion in sales generic makers convinced U.S. District commercial success, that could have shown between 2010 and 2015, according to the Judge Leonard P. Stark that Acorda’s patents Acorda’s patents were not obvious to skilled opinion. would have been obvious to skilled artisans. artisans. Acorda Therapeutics Inc. v. Roxane Lab. Inc., No. 14-cv-882, 2017 WL 1199767 (D. Del. The Federal Circuit agreed with a lower court that a Mar. 31, 2017). “blocking patent” ruled out secondary considerations Acorda appealed. such as commercial success, that could have shown the ‘BLOCKING PATENT’ plaintiff’s patents were not obvious to skilled artisans. The Federal Circuit said the previously released ‘938 patent effectively “blocked’ Ampyra was successful commercially, U.S. During that five-year period, the Patent Acorda’s inventions. Circuit Judge Richard G. Taranto wrote for and Trademark Office granted Acorda’s The decision to combine all five patents the majority, calling it “the first and only drug patent applications and issued U.S. Patent would have been obvious considering approved for improving walking in multiple Nos. 8,007,826; 8,663,685; 8,354,437; and previously published research, which sclerosis patients.” 8,440,703. included Acorda’s own studies, it said. Commercial success can prove a patent These patents do not directly treat the Acorda admitted that MS is a chronic was not obvious when it was invented neurological problems associated with MS, disease that many know requires ongoing because otherwise someone else would but are related to the sustained release treatment, but said its patents for the have profited from the invention. formulation of U.S. Patent No. 5,540,938, sustained release formulation of the But the Federal Circuit attributed the drug’s which expired in July. drug were valid due to objective indicia of success to a patent Acorda had obtained Ireland-based Elan Corp. owned the ‘938 nonobviousness. through licensing. The license was for a patent and licensed it to Acorda, the opinion The indicia included Acorda’s own trial blocking patent, which the panel described said. and error, which showed that its inventions as one that would be infringed by other were not obvious because the inventors patents if a license were not obtained. THE LITIGATION made multiple attempts before their U.S. Circuit Judge Pauline Newman When Roxane Laboratories, Teva inventions succeeded, Acorda argued. dissented, saying Acorda’s patents Pharmaceuticals and other drug companies Federal Circuit panel rejected this argument. should have been saved by evidence of filed applications in 2014 to make generic The Federal Circuit said it recently ruled commercial success, an unmet need, versions of Ampyra, Acorda sued each of in Merck Sharp & Dohme Corp. v. Hospira failed development attempts by Acorda them. Inc., 874 F.3d 724 (Fed. Cir. 2017), that and others, and copying. The suits were consolidated in 2015 in the an exclusive license for a blocking patent U.S. District Court for the District of Delaware. PATENTS AND SUCCESS does not necessarily negate evidence of The Coalition for Affordable Drugs LLC commercial success. In the 1990s Acorda started conducting later challenged Acorda’s drugs by However, that ruling could not apply to research into treatments for MS patients petitioning for inter partes review of the Acorda’s case, the court said. The reason no and ran a full-scale study in 2000 and 2001, Acorda patents. one entered Acorda’s market was that they according to the Federal Circuit’s opinion.

6 | WESTLAW JOURNAL n INTELLECTUAL PROPERTY © 2018 Thomson Reuters were afraid of infringing the ‘938 patent, were trying to develop a treatment like the Attorneys: the opinion said. one Acorda had developed, Judge Newman Plaintiff-appellant: Bruce M. Wexler, Paul Hastings LLP, New York, NY; Stephen B. Kinnaird said. It was Elan that kept others out of the market and Igor V. Timofeyev, Paul Hastings LLP, — and kept the market open for Acorda — “The Acorda product met a long-felt need, Washington, DC by refusing to license its patent to anyone for which the failure of others, despite Defendants-cross-appellants: Charles B. Klein, but Acorda, the panel said. decades of experimenting … is evidence Winston & Strawn, Washington, DC Judge Newman’s dissent rejected this of the unobviousness of the Acorda Related Filings: WJ argument. “Decades of failures,” including achievement,” she said. Federal Circuit opinion: 2018 WL 4288982 District Court opinion: 2017 WL 1199767 attempts by Elan, demonstrate that many PTAB decision: 2017 WL 950736

By Patrick H.J. Hughes The Copyright Royalty Board has convinced a D.C. federal appeals panel to reject SoundExchange Inc.’s objections to the royalty rates the board set for streaming digital recordings.

SoundExchange Inc. v. Copyright Royalty law, erroneous, arbitrary and capricious, an rates for ad-based services, provided by Board et al., No. 16-1159, 2018 WL 4440299 abuse of discretion, and not supported by Pandora and iHeartRadio, that differed from (D.C. Cir. Sept. 18, 2018). substantial evidence.” rates for subscription-based services. SoundExchange had accused the board of Specifically, SoundExchange objected to the Ad-based services allow users to listen arbitrarily ignoring market factors, but the royalty judges’ “careless reliance” on license for free and earn revenue by broadcasting District of Columbia U.S. Circuit Court of agreements that Pandora and iHeartRadio advertisements between songs, whereas Appeals said the copyright royalty judges negotiated with content providers as subscription-based services play proved they set reasonable streaming benchmarks for establishing the statutory uninterrupted for a fee. rates for webcasters such as Pandora and rates. The panel said the board’s calculations iHeartRadio. SoundExchange said the judges also were not inconsistent with previous D.C.-based SoundExchange is a nonprofit inappropriately factored in the practice calculations but that the judges just created to collect and distribute royalty of “steering,” which involves webcasters considered different segments of the market. payments for digital performances from negotiating lower rates with copyright The Copyright Royalty Board appropriately satellite and cable providers to copyright owners by threatening to play higher-priced relied on the benchmarks to conclude that owners. recordings less often, thus directing listeners ad-based services earned a lower licensing away from some recordings and toward rate than subscription services, the panel BENCHMARKS others. said, dismissing SoundExchange’s petition. On March 4, 2016, the Copyright Royalty The appeals panel said considering steering WJ Board determined the royalty rates for when setting fair rates was appropriate Attorneys: certain digital performances of sound because webcasters have recently been Appellant: Benjamin J. Horwich and Kelly M. recording and ephemeral recordings, employing the practice. Klaus, Munger, Tolles & Olson, San Francisco, CA; Glenn D. Pomerantz and Rose Leda Ehler, effective retroactively from Jan. 1, 2016, The panel said steering is attractive to many Munger, Tolles & Olson, Los Angeles, CA through Dec. 31, 2020. record labels, which agree to a lower rate Appellees: Scott H. Angstreich, Michael K. The board has held proceedings every five for some works in exchange for broader Kellogg, John Thorne and Leslie V. Pope, Kellogg, years since 2000 to set rates and terms for online exposure in the hope that listeners Hansen, Todd, Figel & Frederick, Washington, DC; R. Bruce Rich, Todd D. Larson and Gregory S. online performances. will make purchases from other revenue Silbert, Weil, Gotshal & Manges, New York, NY On May 27, 2016, SoundExchange filed a sources, such as recordings or merchandise. Related Filings: petition seeking appellate review of the SoundExchange also said the Copyright D.C. Circuit opinion: 2018 WL 4440299 board’s rates, arguing that the royalty Royalty Board departed from previous rate- Opening brief: 2017 WL 192834 judges’ determinations were “contrary to setting procedure and arbitrarily applied

By Dave Embree Malibu Media LLC may subpoena an internet service provider to determine the identity of an alleged copyright infringer, a Maryland federal judge has ruled, placing restrictions on the porn producer’s use of that information to protect the individual’s privacy.

Malibu Media LLC v. Doe, No. 18-cv-2786, 2018 WL 4335516 (D. Md. to identify the defendant by matching his or her IP address to the Sept. 11, 2018). company’s subscriber records. To justify the limitations placed on Malibu’s subpoena request, MOTION GRANTED, BUT WITH RESTRICTIONS U.S. District Judge James K. Bredar of the District of Maryland cited concerns raised about “abusive” settlement-negotiation tactics In his ruling, Judge Bredar placed a number of restrictions on how reportedly used by plaintiffs in similar cases over the alleged illegal Malibu can use the information it receives from the ISP. downloading of pornographic films. First, Malibu must ask Verizon to notify the defendant about the subpoena and give him or her the chance to respond it to anonymously, The plaintiff must ask Verizon to notify the order said. the defendant about the subpoena Additionally, Malibu must mark any information it receives from and give him or her the chance to respond Verizon as “highly confidential,” and promise not to reveal the defendant’s identity to any person not directly involved in the litigation, it to anonymously, the order said. Judge Bredar said. While the order permits Malibu to depose the defendant, it also limits Plaintiffs have allegedly coerced defendants into agreeing to the duration of any deposition to one hour. settlements due to the possibility of embarrassment, Judge Bredar wrote. Finally, Judge Bredar ruled that Malibu may not initiate settlement negotiations with the defendant if he or she is not represented by According to Malibu’s Sept. 8 complaint, the unknown defendant, counsel, and any settlement negotiations must be conducted under identified only by an IP address, illegally downloaded the company’s the supervision of a magistrate judge. WJ copyrighted pornographic content using the peer-to-peer file sharing Attorneys: system BitTorrent. Plaintiff: Jon A. Hoppe, Washington, DC The complaint accuses the defendant of direct copyright infringement Related Filings: in violation of the U.S. Copyright Act, 17 U.S.C.A. § 101, and asks the Order: 2018 WL 4335516 court for statutory damages and attorney fees. Memo supporting motion to serve subpoena: 2018 WL 4403763 Malibu also asked the court Sept. 8 for permission to subpoena Complaint: 2018 WL 4403762 Verizon Fios, the defendant’s internet service provider, in an attempt

By Patrick H.J. Hughes Several music licensing organizations have voiced their collective opinion to the U.S. Supreme Court about a copyright registration issue before it, arguing that lengthy administrative delays mean a copyright suit should be allowed as soon as a registration application is filed.

Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC et al., No. 17-571, amicus brief filed, 2018 WL 4252035 (U.S. Sept. 4, 2018). Because of a circuit split, some victims of copyright infringement must delay filing suit, often up to two years, until the U.S. Copyright Office issues a registration certificate. The industry groups say that such a requirement, if applied to all circuits, could have a “devastating effect” on the music industry. The American Society of Composers, Authors and Publishers; Broadcast Music Inc.; Nashville Songwriters Association International; National Music Publishers Association; Recording Industry Association of America; and Songwriters of North America filed the brief in support of petitioner Fourth Estate Public Benefit Corp. REUTERS/Andrew Kelly Music organizations such as the American Society of Composers, Authors and Publishers say the Copyright Office’s lag time in registering a work makes it impractical for musicians to wait for a certificate before filing a copyright suit. ASCAP President and Chairman Paul The Supreme Court agreed in June to decide Williams is shown here. if registration is a prerequisite for filing a copyright suit. Fourth Estate Pub. Benefit and vibrant free press,” according to its The 11th U.S. Circuit Court of Appeals Corp. v. Wall-Street.com LLC, 138 S. Ct. 2707 website. The group licenses its content to affirmed. Fourth Estate Pub. Benefit Corp. v. (2018). websites for a fee. Wall-Street.com LLC, 856 F.3d 1338 (11th Cir.). The music organizations say the Copyright Wall-Street.com LLC, the respondent in the The panel said it agreed with the Office’s lag time in registering a work dispute, is a website that publishes content 10th Circuit’s “registration approach,” but makes it impractical for musicians to wait about the financial industry. disagreed with the “application approach” for a certificate before filing a suit. Fourth Estate filed a copyright suit against taken by the 5th and 9th circuits. Some “The wait from the time of submission Wall-Street.com in 2016 after discovering circuits have refused to address the issue at to issuance of certificate can be daunting. it was impermissibly publishing Fourth all, the panel said. … [D]elays of a year or more are not Estate’s content. After Fourth Estate asked the Supreme uncommon,” the brief says. “Particularly Wall-Street.com moved to dismiss, arguing Court to review the issue, the U.S. in the case of recently released songs at that Fourth Estate had filed applications government submitted an amicus brief that the peak of their earning potential, it is but had not yet obtained copyright also urged the justices to resolve the circuit critical to be able to seek prompt judicial registration certificates for the allegedly split. intervention against unauthorized uses.” infringed works. Unlike Fourth Estate, however, the government endorsed the registration CIRCUIT SPLIT The Southern District of Florida agreed with Wall-Street.com and dismissed the suit. approach. It said the relevant provisions in Based in Washington, D.C., Fourth Estate Fourth Estate Public Benefit Corp. v. Wall- the Copyright Act were “most naturally read” is an international, independent journalism Street.com LLC, No. 16-60497, 2016 WL to require registration certificates before organization that supports “a sustainable 9045625 (S.D. Fla. May 23, 2016). filing suit.

© 2018 Thomson Reuters SEPTEMBER 26, 2018 n VOLUME 25 n ISSUE 12 | 9 PRACTICAL CONSIDERATIONS initial release, when a work might have the Attorneys: highest earning potential and an injunction Petitioner: Joel B. Rothman and Jerold I. ASCAP and the other music organizations Schneider, Schneider Rothman Intellectual could be invaluable, the groups say. urge the Supreme Court to make practical Property Law Group PLLC, Boca Raton, FL; considerations when interpreting the Sometimes, a delay at the Copyright Office Aaron M. Panner, Gregory G. Rapawy and Collin R. White, Kellogg, Hansen, Todd, Figel & can exceed the three-year limitations Copyright Act. Frederick, Washington, DC period of a work, making it impossible for The Copyright Office works on a limited a copyright owner to sue in some circuits, Related Filings: budget with limited resources, the groups’ the brief says. Amicus brief (ASCAP etc.): 2018 WL 4252035 brief says. Their members have felt these Amicus brief (US): 2018 WL 2264108 limitations firsthand, as music publishers Congress adapted the Copyright Act of 1976 Petition for cert.: 2017 WL 4641783 and record labels have expended significant to recognize that copyrights attach at the 11th Cir. opinion: 856 F.3d 1338 District Court opinion: 2016 WL 9045625 resources only to confront barriers brought moment a creative work is fixed in a tangible by delays, according to the brief. medium of expression, the brief says. See Document Section A (P. 19) for the brief. For music creators and owners, the situation The music organizations say this shows is “particularly pernicious” because digital Congress did not intend for the Copyright piracy is especially prevalent at the time of Office to be a barrier to copyright enforcement. WJ

TRADEMARK PTO asks justices to keep ban on ‘scandalous’ trademarks

By Patrick H.J. Hughes The ban on trademarks that “may disparage” is gone, but the ban on “scandalous” trademark registrations is still on the Patent and Trademark Office’s books and the PTO is asking the U.S. Supreme Court to keep it that way.

Iancu v. Brunetti, No. 18-302, petition for revival of Washington Redskins trademark identical to an obscene word and therefore cert. filed, 2018 WL 4331883 (U.S. Sept. 7, registrations that the PTO had rejected on unregistrable as “scandalous.” 2018). the possibility that they might disparage. The Trademark Trial and Appeal Board The PTO’s certiorari petition claims the U.S. The trademark examiner’s guide has not agreed and affirmed the rejection.In re Court of Appeals for the Federal Circuit erred been changed to reflect the Federal Circuit’s Brunetti, No. 85310960, 2014 WL 3976439 when it said the statutory bar on scandalous Brunetti decision. (T.T.A.B. Aug. 1, 2014). terms, defined as “vulgar terms and graphic sexual images,” was unconstitutional. The Federal Circuit said it did not matter if the The Federal Circuit said in December that Erik Brunetti’s “Fuct” trademark comprised bar on scandalous marks was viewpoint “immoral or scandalous matter,” but the discriminatory, because it discriminates based PTO’s refusal to register the mark violated on content in violation of the First Amendment. the First Amendment. In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017). If the Supreme Court does not overturn While an appeal was pending, the Supreme The three-judge panel based its reasoning on that decision, it will preclude the PTO from Court issued its “Slants” decision, and the the Supreme Court’s holding in Matal v. Tam, adhering to the scandalous-marks ban in Federal Circuit asked the parties about the 137 S. Ct. 1744 (2017), which removed the Section 2(a) of the Lanham Act, 15 U.S.C.A. impact of that decision. Lanham Act’s bar on registering disparaging § 1052(a), the petition says. The PTO said the Supreme Court’s ruling marks. did not resolve the constitutionality of the That case concerned an Asian-American TRADEMARK IS ‘FUCT’ bar on scandalous marks because the dance-rock band’s application for federal Brunetti tried in 2012 to federally register his disparagement provision of the Lanham trademark registration of its name, “The “Fuct” trademark for athletic apparel and Act discriminated based on the trademark Slants.” other clothing that displayed strong and holder’s viewpoint and the scandalous The high court’s decision and the often explicit sexual imagery. provision does not. resulting change to the PTO’s trademark The trademark examining attorney rejected The owner of a mark that violated the examination guide famously led to the the application, finding the mark phonetically disparagement provision took a view that

10 | WESTLAW JOURNAL n INTELLECTUAL PROPERTY © 2018 Thomson Reuters disparages a certain group; marks are TRADEMARK scandalous when they use “viewpoint- neutral vulgar words and images,” the PTO explained. High court should reject review of ‘first ever’ The Federal Circuit said it did not matter if the bar on scandalous marks was viewpoint circuit split, trademark holder says discriminatory, because it discriminates By Donna Higgins based on content in violation of the First Amendment. A single circuit split over the treatment of trademark rights in bankruptcy, created by an appeals court decision in a case arising from unusual factual CONTENT-BASED RESTRICTION circumstances, does not warrant U.S. Supreme Court review, a bankrupt The PTO says high court review is warranted trademark holder says in a Sept. 7 opposition brief. because the Tam case is not controlling. Mission Product Holdings Inc. v. Tempnology The respondent had waived its right to file a While all the justices — eight at the time — LLC, No. 17-1657, opposition brief filed, response but the Supreme Court requested agreed the Lanham Act’s disparagement 2018 WL 4275886 (U.S. Sept. 7, 2018). that it submit one. clause was unconstitutional, the court was split over the reason. “Petitioner’s dogged pursuit of litigation A group of law professors and the resulted in a first-ever circuit split between International Trademark Association filed Half the justices said the restriction was just the 1st and 7th circuits regarding the amicus briefs supporting Mission’s bid for unconstitutional because the PTO and effects of rejection of a trademark license” review. Congress mistakenly viewed trademarks in bankruptcy, respondent Tempnology LLC as government speech, and the First says. “It is premature for the U.S. Supreme CONTRACT REJECTED IN Amendment does not generally restrict the Court to address this nascent split.” BANKRUPTCY government’s censorship of its own speech. Mission Product Holdings Inc. is seeking New Hampshire-based Tempnology made The other half blamed viewpoint review of a 1st U.S. Circuit Court of Appeals cooling fabrics for exercise clothing sold discrimination. The collective view of this ruling that said Mission lost its right to use under the “Coolcore” and “Dr. Cool” brands, half of the Supreme Court needs to be debtor Tempnology’s trademarks and other according to the petition. considered before the rule prohibiting intellectual property when Tempnology scandalous marks can be overturned, the In 2012 Tempnology entered into an rejected the parties’ license agreement as an PTO says. agreement that gave Mission the executory contract. nonexclusive right to sell certain patented Removing content-based restrictions makes The decision “casts a cloud of uncertainty and trademarked Tempnology products no sense in the trademark realm, the PTO over significant commercial transactions throughout the world, and the exclusive right says. that are central to our nation’s system for to sell a subset of those products within the As trademarks are exclusively used for encouraging and rewarding innovation,” United States, the petition says. commercial speech, they should be regulated according to the petition. In September 2015 Tempnology entered as such, the petition says. The PTO offers The 1st Circuit’s ruling conflicts with the Chapter 11 in the U.S. Bankruptcy Court for the example of a ban on lewd photos in ads 7th Circuit’s decision in Sunbeam Products the District of New Hampshire and sought on city buses. Inc. v. Chicago American Manufacturing LLC, to reject its agreement with Mission as an “Content-based restrictions on registration 686 F.3d 372 (7th Cir. 2012), which said executory contract under Section 365(a) of are a longstanding feature of federal a licensee’s trademark rights survived a the Bankruptcy Code, 11 U.S.C.A. § 365(a). trademark law,” the petition says. WJ debtor’s rejection of the license agreement in Mission objected, asserting its option to Attorneys: bankruptcy, Mission said. retain its contractual rights as an intellectual Petitioner: Sarah Harris, Joseph Matal, Christina J. Hieber, Thomas L. Casagrande, Tempnology says review is premature because property licensee as provided under Section Mary Beth Walker and Molly R. Silfen, U.S. the split with the 7th Circuit is relatively new 365(n). Patent and Trademark Office, Alexandria, Va. and the issue should be allowed to develop The Bankruptcy Court ruled that the Related Filings: further in the lower courts. protections to intellectual property rights Petition for cert.: 2018 WL 4331883 “Here the 1st Circuit properly recognized that afforded licensees under Section 365(n) Federal Circuit opinion: 877 F.3d 1330 … the Bankruptcy Code’s strong policy of did not extend to Mission’s exclusive PTO’s letter brief: 2017 WL 3228588 TTAB decision: 2014 WL 3976439 permitting a debtor to free itself of ongoing distribution rights or its right to use the obligations under a contract … and the right debtor’s trademarks. Those rights were thus to reject such obligations applies to the terminated by the debtor’s rejection of the burden of policing trademarks — something contract, the court said. to which the 7th Circuit had given shorter shrift,” Tempnology says.

© 2018 Thomson Reuters SEPTEMBER 26, 2018 n VOLUME 25 n ISSUE 12 | 11 Following an appeal to the 1st Circuit’s 1043 (4th Cir. 1985), in which the 4th Circuit premature for the U.S. Supreme Court to step Bankruptcy Appellate Panel, which partially said a debtor’s rejection of an agreement in and terminate the judicial developments reversed the Bankruptcy Court’s decision, the to license intellectual property stripped the that Congress envisioned.” Court of Appeals by a 2-1 margin affirmed the licensee of the right to continue using the IP Even if the split was not premature, the entirety of the Bankruptcy Court’s decision. and allowed the debtor to sell or license it to company says, this would not be the right The Court of Appeals panel held that someone else. case to resolve it because the underlying Tempnology’s rejection terminated Mission’s In response to Lubrizol, Congress enacted factual scenario is unusual. exclusive distribution rights, because Sections 365(n) and 101(35A), but omitted Mission voluntarily terminated its contractual the exclusive right to sell a product that trademark rights from the definition of rights several months before Tempnology’s incorporates patented technology is not an “intellectual property” because it believed bankruptcy filing, and the parties were in a intellectual property right protected under the treatment of trademark rights needed contractual “wind-down” period at the time, Section 365(n). more study, the petition said. the respondent says. The panel majority then said the rejection Nearly 30 years later, the 7th Circuit’s Any further review of the 1st Circuit’s decision also terminated Mission’s trademark Sunbeam decision said a licensee’s trademark would be “an academic exercise that cannot rights, because Section 101(35A) of the rights survived a debtor’s rejection of the concretely affect these parties,” Tempnology code, 11 U.S.C.A. § 101(35A), which defines license agreement in bankruptcy. says. WJ intellectual property for Bankruptcy Code By aligning itself with Lubrizol and rejecting Attorneys: purposes, does not include trademarks and Sunbeam, the 1st Circuit in Mission’s case Petitioner: Danielle Spinelli, Craig Goldblatt, trade names. has restored much of the confusion that Joel Millar and James Barton, Wilmer Cutler Pickering Hale & Dorr, Washington, DC; Mission then filed its petition for a writ of Congress sought to resolve when it enacted Robert J. Keach and Lindsey Z. Milne, Bernstein, certiorari. Sections 365(n) and 101(35A), the petition Shur, Sawyer & Nelson, Portland, ME said. Respondent: Daniel W. Sklar, Nixon Peabody, CHOOSING SIDES Manchester, NH; Lee Harrington and George Skelly, Nixon Peabody, Boston, MA “The 1st Circuit’s decision openly chooses ‘AN ACADEMIC EXERCISE’ sides … in a longstanding circuit split on The legislative history of Section 365(n) Related Filings: a fundamental bankruptcy question: the shows that Congress intended to leave Opposition brief: 2018 WL 4275886 effect of a debtor’s rejection of an executory trademark issues for “further development Certiorari petition: 2018 WL 2967405 Law professors’ amicus brief: 2018 WL 3811976 contract, and, in particular, an agreement to and evolution” in the courts, Tempnology INTA’s amicus brief: 2018 WL 3425350 license intellectual property,” Mission said in says. 1st Circuit opinion: 879 F.3d 389 the petition. “That exploration has only just begun,” it The 1st Circuit followed Lubrizol Enterprises, said. “Until the issues are further fleshed Inc. v. Richmond Metal Finishers, Inc., 756 F.2d out by other courts of appeals, it would be

WESTLAW JOURNAL EMPLOYMENT

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By Patrick H.J. Hughes Wall Street Journal publisher Dow Jones & Co. Inc. says in a New York state court lawsuit that a woman posing on social media as a reporter for the financial newspaper is tarnishing its good name. WESTLAW JOURNAL Dow Jones & Co. v. Bourbon, No. 158283/2018, has written has appeared in the paper or at complaint filed, 2018 WL 4251844 (N.Y. Sup. wsj.com, the complaint says. Ct., N.Y. Cty. Sept. 6, 2018). COMPUTER Dow Jones’ complaint also alleges instances Dow Jones filed the suit in the New York when Bourbon purported to be a Wall Street & County Supreme Court, saying Contessa Journal reporter on Facebook and Instagram. Bourbon’s false representations make her INTERNET In addition, the complaint lists numerous liable for trademark dilution in violation times since February 2015 when it says of Section 360-L of New York’s General Bourbon has made in-person claims that Business Law, N.Y. Gen. Bus. Law § 360-L. she worked for The Wall Street Journal to This publication, previously According to the complaint, “Bourbon has gain access to press-related events. known as the Computer never, at any time, had any professional Dow Jones says it sent a cease-and-desist and Online Industry or business relationship with Dow Jones,” letter to Bourbon’s Elmhurst, New York, Litigation Reporter, follows the New York-based financial information home, but she continued to represent herself provider that prints the journal and has the lawsuits arising from as affiliated with The Wall Street Journal. owned a trademark registration for “The Wall the use of the Internet for Street Journal” since 1944. Bourbon’s use of the paper’s trademark in business and recreation, Bourbon’s Twitter page includes the caption connection with “her physical impersonation as well as cases involving “Journalist for the Wall Street Journal,” of a reporter for The Wall Street Journal computer hardware and and in representing herself online” is likely and her tweets ask readers to “read WSJ” software. This publication to see her work, even though nothing she to dilute the distinctive quality of its mark, according to the complaint. helps you stay abreast Dow Jones says it has suffered damages of the latest pretrial to the reputation of its mark because of activities and winning case Bourbon’s actions and seeks injunctive relief, strategies in this quickly costs and attorney fees. changing area of litigation. The New York Times Co. filed a lawsuit in Each issue covers cases November that also complained of Bourbon’s involving intellectual alleged impersonations and trademark property, national and dilution. Bourbon was claiming to be from that paper, too, The New York Times said. international jurisdictional A trial judge in May denied The New York issues, antitrust, Internet Times’ request for a default judgment when regulation, computer Bourbon was a no-show. New York Times crime, and privacy issues, Co. v. Bourbon, No. 656843, 2018 WL including issues arising 2386366 (N.Y. Sup. Ct., N.Y. Cty. May 25, from the increasing use of 2018). That dispute remains unresolved. WJ social networking sites like Attorneys: Plaintiff: Joseph Weissman, Dow Jones & Co. Inc., Facebook and MySpace. New York, NY; Steven Lieberman and Sharon Davis, Rothwell Figg, Ernst & Manbeck, Washington, DC Call your West representative for more information Related Filings: about our print and online subscription packages, Complaint: 2018 WL 4251844 or call 800.328.9352 to subscribe. Contessa Bourbon’s Twitter profile is pictured here, showing her claims that she works for the WSJ. See Document Section B (P. 30) for the complaint.

By Patrick H.J. Hughes The search engine operator at Ask.com could not convince the Trademark Trial and Appeal Board to cancel an online software company’s “Askbot” trademark registration.

IAC Search & Media Inc. v. Askbot S.p.A., since 1995, when it launched under the name or services were similar enough to lead to the Cancellation No. 92060041, 2018 WL “Ask Jeeves!” It retired the “Jeeves” portion in possibility of confusion. 4237617 (T.T.A.B. Aug. 31, 2018). 2006. IAC provided a search engine and Askbot The TTAB said IAC Search & Media Inc., which IAC now owns Ask block-letter marks for provided Q&A forums, the TTAB noted. owns the Ask search engine, failed to show computer software and social networking Although the parties used different methods, that its “Ask” trademarks could be confused services, design trademarks with a circle they had the “same end functionality: with the registered mark of Askbot S.p.A., a around the word “Ask” for computer services answering online questions for others,” the software developer that provides “question and in other categories, and an Ask.com board said. and answer community forums.” mark for the search engine. While the services were sufficiently similar, The board found the term “bot” did little to Askbot is a Chile-based company that other likelihood-of-confusion factors differentiate the parties’ marks, so confusion released software in 2010 and filed an weighed against a finding of likely confusion, was a concern. application in 2012 to register its name with the TTAB said. However, that concern was outweighed the U.S. Patent and Trademark Office in The board said individuals accessing the by the relative weakness of the Ask categories related to downloadable software Ask search engine who were looking for trademarks when used for search engines and apps. The PTO registered its Askbot Q&A software could be directed to Askbot’s and computer-related services, the board mark in 2013. services, but those services cost at least $15 said. Askbot.com hosts research services such as month, while IAC’s service is free. Unlike famous marks, weak marks are not “Q&A forums” and software to create Q&As. The price differences and the difference entitled to a broad scope of protection, IAC filed its cancellation petition in between the search engine and Askbot’s Q&A and IAC did not show its Ask marks had September 2014, and in 2015 it moved for products showed that the trade channels acquired the level of distinctiveness that summary judgment over the priority of its were different, the TTAB said. would lead consumers to mistakenly believe trademark registrations and likelihood of Given the sophistication of the customers Askbot was associated with the Ask search confusion. and the relative weakness of IAC’s Ask engine, the TTAB said. The TTAB granted IAC’s motion with respect trademarks, confusion between the While IAC provided evidence of its trademarks’ to priority but not confusion. IAC Search & companies’ marks was not likely, the TTAB fame — including that it owns the country’s Media Inc. v. Askbot S.p.A., Cancellation concluded, dismissing IAC’s petition. WJ fourth most popular search engine — that No. 92060041, 2015 WL 9699250 (T.T.A.B. Attorneys: data failed to show the company’s successful Dec. 16, 2015). Petitioner: Gerald J. Ferguson, Baker & Hostetler, New York, NY marketing translated into widespread The goods identified by the respective recognition of the Ask marks, the TTAB said. trademarks were not, on their face, identical Related Filings: to Askbot’s categories and various disputed TTAB decision: 2018 WL 4237617 ASKING IF CONFUSION IS LIKELY Respondent’s trial brief: 2017 WL 3119823 facts had to be considered before a likelihood Petitioner’s trial brief: 2017 WL 2676631 IAC, an Oakland, California-based firm that of confusion could be determined, the board TTAB decision (2015): 2015 WL 9699250 has described itself as “a leading provider said. of online information, Q&A and search See Document Section C (P. 35) for the opinion. To determine if the cancellation petition services,” has used “Ask-formative marks” should be dismissed, the TTAB considered extrinsic evidence to see if the parties’ goods

By Dave Embree E-Trade Financial Corp. has convinced a Chicago federal judge to issue a temporary restraining order against a former employee the company sued for allegedly misusing confidential company data to solicit clients to follow her to Morgan Stanley.

E-Trade Financial Corp. v. Pospisil, before resigning to work for competitor That same day, E-Trade filed suit in Chicago No. 18-cv-5908, 2018 WL 4205401 (N.D. Ill. Morgan Stanley in August, the suit says. federal court, asking Judge Guzman to Sept. 4, 2018). Pospisil then used the confidential issue a temporary restraining order to U.S. District Judge Ronald A. Guzman of the information to contact E-Trade clients and prevent Pospisil from continuing to use its Northern District of Illinois ruled that E-Trade convince them to move their investments confidential data to solicit clients during the was likely to succeed on the merits of the to Morgan Stanley, according to the suit. FINRA proceeding. suit and would suffer irreparable harm if its E-Trade also alleges that before she quit, Judge Guzman agreed to issue the TRO former employee were allowed to continue to Pospisil attended a Chicago Cubs baseball in a Sept. 4 order, reasoning that E-Trade solicit its clients. game with one of her clients to solicit was likely to succeed on the merits in its Heather Pospisil worked as a financial business for Morgan Stanley. arbitration action. consultant for E-Trade in Chicago from Since leaving her job Aug. 2, Pospisil’s Pospisil’s pattern of contacting E-Trade’s December 2013 to August 2018, the actions have caused E-Trade to lose clients clients “seems very much like a recruitment company’s complaint says. with more than $4.4 million in investment effort,” Judge Guzman wrote. As part of her employment Pospisil signed assets, the complaint says. He also accepted E-Trade’s argument that a confidentiality agreement the prohibited it would suffer irreparable harm if Pospisil her from copying, retaining or taking any of TEMPORARY RESTRAINING ORDER were not enjoined from further soliciting its E-Trade’s customer lists or other confidential E-Trade commenced an arbitration clients. data without the firm’s written consent, proceeding against Pospisil on Aug. 28 “Not only is the economic harm difficult to according to the complaint. before the Financial Industry Regulatory quantify, if Pospisil is not enjoined, it is not However, Pospisil accessed a secure company Authority, seeking monetary damages and clear how many clients will follow suit in the database and reviewed an “abnormally high injunctive relief. future,” Judge Guzman wrote. WJ number” of confidential client files shortly Attorneys: Plaintiff: Jamie L. Filipovic and Sheri A. Tambourine, O’Hagan Meyer LLC, Chicago, IL; Rhianna S. Hughes and Rodney B. Sorensen, Payne & Fears, San Francisco, CA Defendant: Jerry M., Santangelo, Neal, Gerber & Eisenberg, Chicago, IL; Matthew B. Henneman, Henneman Rau LLP, Houston, TX

Related Filings: Order: 2018 WL 4205401 Memo supporting TRO motion: 2018 WL 4265807 Complaint: 2018 WL 4265810

REUTERS/Lucas Jackson

© 2018 Thomson Reuters SEPTEMBER 26, 2018 n VOLUME 25 n ISSUE 12 | 15 Music act are too old to tour, the statute will ensure The Music Modernization Act is good for CONTINUED FROM PAGE 1 they receive at least some compensation, songwriters, the group said, but the Classics as their contemporaries do, the RIAA said on Act creates new barriers to accessing The Compensating Legacy Artists for their its website. pre-1972 works that were previously available. Songs, Service and Important Contributions After the Classics Act is enacted, failing to to Society — or Classics — Act is the “With this bill, we are get a license to stream those works online third major portion of the bill. It provides one step closer to historic could leave webcasters liable for “massive, compensation for copyright owners of sound unpredictable statutory damages,” the EFF recordings made before 1972, the cutoff reform for our badly said in a statement March 28. date for protection of recordings set by the outdated music laws,” Copyright Act of 1976. The bill does not increase public access to Sen. Orrin G. Hatch said. these recordings because they are already The Recording Industry Association of available, the EFF said. America described the Classics Act as “overdue legislation.” Because many Digital-rights group Electronic Frontier It only puts streaming services Pandora musicians who recorded works before 1972 Foundation, in contrast, called the Classics and Sirius XM in “a privileged position,” the Act “harmful.” group said. WJ

Acorda Therapeutics Inc. et al. v. Roxane Laboratories Inc. et al., Nos. 2017-2078 and 2017-2134, 2018 WL 4288982 (Fed. Cir. Sept. 10, 2018)...... 6

Dow Jones & Co. v. Bourbon, No. 158283/2018, complaint filed, 2018 WL 4251844 (N.Y. Sup. Ct., N.Y. Cty. Sept. 6, 2018)...... 13 Document Section B...... 30

E-Trade Financial Corp. v. Pospisil, No. 18-cv-5908, 2018 WL 4205401 (N.D. Ill. Sept. 4, 2018)...... 15

E.I. du Pont de Nemours & Co. et al. v. Synvina CV, No. 2017-1977, 2018 WL 4390796 (Fed. Cir. Sept. 17, 2018)...... 5

Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC et al., No. 17-571, amicus brief filed, 2018 WL 4252035 (U.S. Sept. 4, 2018)...... 9 Document Section A...... 19

IAC Search & Media Inc. v. Askbot S.p.A., Cancellation No. 92060041, 2018 WL 4237617 (T.T.A.B. Aug. 31, 2018)...... 14 Document Section C...... 35

Iancu v. Brunetti, No. 18-302, petition for cert. filed, 2018 WL 4331883 (U.S. Sept. 7, 2018)...... 10

Malibu Media LLC v. Doe, No. 18-cv-2786, 2018 WL 4335516 (D. Md. Sept. 11, 2018)...... 8

Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, opposition brief filed, 2018 WL 4275886 (U.S. Sept. 7, 2018)...... 11

Music Modernization Act of 2018, 2017 CONG US S 2823 (Sept. 18, 2018)...... 1

SoundExchange Inc. v. Copyright Royalty Board et al., No. 16-1159, 2018 WL 4440299 (D.C. Cir. Sept. 18, 2018)...... 7

The most intelligent legal research platform ever.

Experience it at westlawedge.com DOCUMENT SECTION A FOURTH ESTATE

2018 WL 4252035 (U.S.) (Appellate Brief) Supreme Court of the United States.

FOURTH ESTATE PUBLIC BENEFIT CORPORATION, Petitioner, v. WALL-STREET.COM, LLC and Jerrold D. Burden, Respondents.

No. 17-571. August 30, 2018.

On Writ of Certiorari to the United States Court of Appeals for the Eleventh Circuit September 4, 2018

Brief for the National Music Publishers’ Association, Recording Industry Association of America, American Society of Composers, Authors and Publishers, Broadcast Music, Inc., Nashville Songwriters Association International, and Songwriters of North America, as Amici Curiae in Support of Petitioner

Jacqueline C. Charlesworth, Covington & Burling LLP, 620 Eighth Avenue, New York, NY 10018, (202) 841-1000, [email protected].

Beth S. Brinkmann, Kevin F. King, Rafael Reyneri, Covington & Burling LLP, 850 Tenth Street, NW, Washington, DC 20001, (202) 662-6000, [email protected], for amici curiae.

*i TABLE OF CONTENTS TABLE OF AUTHORITIES ...... iii

INTEREST OF AMICI CURIAE ...... 1

SUMMARY OF ARGUMENT ...... 3

ARGUMENT ...... 6

I. A COPYRIGHT OWNER THAT COMPLIES WITH THE REGISTRATION REQUIREMENTS OF THE COPYRIGHT ACT IS ENTITLED TO SEEK TIMELY INJUNCTIVE AND OTHER RELIEF IN COURT ...... 6

A. The Ability To Seek Judicial Relief Against Infringers Is An Essential Feature Of The U.S. Copyright System That Congress Did Not Intend To Diminish Based On Administrative Delay...... 6

B. Surrounding Provisions Of The Copyright Act Confirm That Registration Is “Made” Under Section 411(a) When A Copyright Owner Delivers The Required Deposit Of The Work And Other Registration Materials To The Copyright Office...... 10

II. IN ENACTING SECTION 411(a), CONGRESS SOUGHT TO ENSURE THAT THE COPYRIGHT OFFICE WOULD NOT BE A BARRIER TO A COPYRIGHT OWNER’S RIGHT TO TIMELY JUDICIAL RELIEF AGAINST INFRINGERS...... 15

*ii A. This Court’s Longstanding Presumption In Its Washingtonian Opinion Forecloses Respondents’ Interpretation...... 15

B. Congress’ Rejection Of A Pre-Suit Mandamus Requirement In The 1976 Act Validates Petitioner’s Reading...... 17

III. RESPONDENTS’ RULE WOULD DENY COPYRIGHT OWNERS MEANINGFUL PROTECTION OF THEIR STATUTORY RIGHTS ...... 19

A. The Copyright Office Typically Takes Months And Sometimes Years To Carry Out Its Administrative Function And Issue A Certificate...... 19

B. To Delay For Months Or Years A Copyright Owner’s Right To Seek Injunctive Or Other Judicial Relief Effectively Abrogates That Right...... 24

CONCLUSION ...... 27

APPENDIX: DESCRIPTIONS AND INTERESTS OF AMICI CURIAE ...... 1a

*iii TABLE OF AUTHORITIES CASES Am. Broad. Companies, Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014)...... 16 Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612 (9th Cir. 2010) ...... 25 FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120 (2000) ...... 8 Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998) ...... 24 Roberts v. Sea-Land Servs., Inc., 566 U.S. 93 (2012) ...... 26 United States v. Hayes, 555 U.S. 415 (2009) ...... 25 Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637 (2d Cir. 1958) ...... 17 Washingtonian Publishing Co. v. Pearson, 306 U.S. 30 (1939) ...... passim

STATUTES 2 U.S.C. § 505 ...... 11, 12 15 U.S.C. § 1173 ...... 12 *iv 17 U.S.C. § 12 (1939) ...... 17 17 U.S.C. § 102 ...... 6 17 U.S.C. § 405 ...... 11 17 U.S.C. § 408 ...... passim 17 U.S.C. § 410 ...... 8, 9, 10, 18 17 U.S.C. § 411 ...... passim 17 U.S.C. § 501 ...... 7 17 U.S.C. § 502 ...... 24 17 U.S.C. § 507 ...... 22 17 U.S.C. § 708 ...... 11 45 U.S.C. § 362 ...... 12

OTHER AUTHORITIES 37 C.F.R. § 201.3 ...... 11 47 Fed. Reg. 19,254 (May 4, 1982) ...... 22 83 Fed. Reg. 24,054 (May 24, 2018) ...... 23 Benjamin Kaplan, Study No. 17 - The Registration of Copyright (Aug. 1958) ...... 17, 18, 19 Caruthers Berger, Study No. 18 - Authority of the Register of Copyrights to Reject Applications for Registration (Mar. 1959) ...... 19 *v Copyright Law Revision, Hearing Before the Subcomm. on Patents, Trademarks, and Copyrights of the S. Comm. on the Judiciary, 89th Cong. (1965) ...... 16 H. Comm. on Appropriations, FY 2016 Appropriations Questions for the Record (Mar. 10, 2015) ...... 20 H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. (1976) ...... 8, 9, 18, 20, 24 Oversight of the U.S. Copyright Office: Hearing Before the Subcomm. on Courts, Intellectual Property, and the Internet of the H. Comm. on the Judiciary, 113th Cong. (2014) ...... 20 S. Rep. No. 94-473, 94th Cong., 1st Sess. (1975) ...... 9, 18 U.S. Copyright Office,Compendium of U.S. Copyright Office Practices ...... 19, 23 U.S. Copyright Office,Fiscal 2016 Annual Report, https://www.copyright.gov/reports/annual/2016/ar2016.pdf ...... 20 U.S. Copyright Office,Fiscal 2017 Annual Report, https://www.copyright.gov/reports/annual/2017/ar2017.pdf ...... 14 *vi U.S. Copyright Office,Registration Processing Times, https://www.copyright.gov/registration/docs/processing- times-faqs.pdf (accessed Aug. 31, 2018) ...... 20

*1 INTEREST OF AMICI CURIAE1

Amici curiae the National Music Publishers’ Association, the Recording Industry Association of America, the American Society of Composers, Authors and Publishers, Broadcast Music, Inc., Nashville Songwriters’ Association International, and Songwriters of North America are leading music trade organizations and performing rights societies representing the interests of music publishers, record companies, and individual songwriters and composers. Amici’s members, who collectively register tens of thousands of musical works and sound recordings each year with the Copyright Office, have a substantial interest in this case because their copyrighted works are the foundation of their businesses and source of livelihood for individuals who create them. Amici’s members depend upon the rights conferred by the Copyright Act - including the right to seek injunctive relief and obtain damages for the unauthorized use of their musical works and sound recordings - to protect the works they create, invest in, license, and distribute.2

The question presented in this case bears directly on that interest. The rule advocated by Respondents *2 and adopted by the Eleventh Circuit below would prohibit a copyright owner from seeking injunctive or other relief until the Copyright Office determines whether to issue a copyright certificate. Under that rule, a copyright owner could not enforce its exclusive rights against ongoing infringement even though the owner has met its statutory obligation to deliver to the Office the work at issue, the application, and the required fee, at which time the Copyright Act deems a copyright registration to be effective. Moreover, Respondents’ rule would disable copyright owners’ enforcement rights in this way even though the Copyright Act allows an owner to sue regardless of whether the Copyright Office issues a registration certificate.

The Copyright Office operates with a limited budget, staffing, and resources. The Office acknowledges that it typically takes seven to nine months, and sometimes more than two years, for a copyright owner to receive a copyright certificate. In the experience ofAmici ’s members, the delay can be even longer and in some instances may consume most or all of the Copyright Act’s three-year limitations period, thereby eliminating altogether a copyright owner’s ability to bring an infringement action. Moreover, as also recognized by the Office, the general trend in recent years is that processing times are increasing.

The regime for which Respondents advocate would have a devastating effect on Amici’s members and others in the broader music industry, who at least now may be able to bring suit without undue delay in one of the jurisdictions that takes the opposite view. Particularly in the case of recently released songs at the peak of their earning potential, it is critical to be able *3 to seek prompt judicial intervention against unauthorized uses. Accordingly, Amici respectfully submit that the Court should reject Respondents’ misguided rule and confirm that a copyright owner may file an action against an infringer once the owner has made registration for the work by depositing the work, along with the application and fee, with the Copyright Office, as Congress intended - and as the Copyright Act, correctly read, provides.

SUMMARY OF ARGUMENT

I. Copyright protection attaches to original works the moment they are fixed in a tangible medium, and does not depend on action by the Copyright Office. Copyrights are not self-enforcing, however, and copyright owners must turn to the courts to enforce their statutory rights. The ability to sue for infringement and obtain injunctive relief is the central statutory mechanism by which the Copyright Act’s substantive protection of exclusivity is enforced. Without that ability, a copyright is “of no value.” Washingtonian Publishing Co. v. Pearson, 306 U.S. 30, 39-40 (1939).

Section 411(a) of the Copyright Act is meant to ensure that copyright owners can stop infringement of their works without delay. Section 411(a) permits owners to file an infringement action as soon as “registration … has been made,” and section 408 in turn provides that an owner “may obtain registration” by delivering the required deposit copies of the work, an application, and a fee to the Copyright Office. Surrounding statutory provisions demonstrate that registration is “made” under section 411(a) by the copyright owner such that the owner may sue for *4 infringement as soon as the owner fulfills section 408’s registration requirements, rather than needing to wait for action by the Copyright Office as Respondents contend. For example, section 410(d) makes registration effective on the date when an acceptable deposit of the work, application, and fee are received by the Copyright Office, as determined by the Office or by a court; section 411(a) authorizes copyright owners to sue for infringement whether or not the Copyright Office issues a certificate; and section 411(c) provides added protections when “the copyright owner … makes registration for the work.” 17 U.S.C. § 411(c) (emphasis added). Congress made other rights, such as entitlement to prima facie validity of a copyright, expressly contingent on the Copyright Office’s issuance of a certificate, but did not do so in section 411(a). Respondents’ attempt to rely, instead, on the Act’s preregistration and live-broadcast provisions, see 17 U.S.C. §§ 408(f), 411(c), is without merit because that argument fails to account for significant limitations on those procedures.

II. The statutory purpose and legal backdrop against which Congress enacted section 411(a) as part of the Copyright Act of 1976 confirm that Congress intended that copyright owners be able to obtain timely judicial enforcement, including injunctions against ongoing infringers. This Court has long recognized the significance of judicial enforcement to protect copyrights and declared that “forfeiture[]” of a copyright owner’s right to sue is “never to be inferred from doubtful language.” Washingtonian, 306 U.S. at 42. Moreover, Congress designed section 411(a) to overturn, in particular, the rationale of some lower courts *5 that had required a copyright owner to obtain a certificate from the Register, through mandamus if necessary, before suing for infringement.

III. The Court should reject Respondents’ contention that a copyright owner cannot file an infringement suit until the Copyright Office issues a certificate or refuses to do so. There is often a significant time lag between when a copyright owner deposits the required copies of the work, application, and fee to fulfill the registration requirements, and when the Copyright Office issues a certificate or determines that it will not do so. The Office faces human and technological constraints, and acknowledges that administrative delay is typically seven to nine months and can be more than two years in some instances.

Amici’s members experience these delays firsthand. In the experience ofAmici ’ s members, delays of a year or more are not uncommon, and the processing time for some musical works and sound recordings is so long that it exceeds the Copyright Act’s three-year limitations period for infringement suits. As a result, under Respondents’ rule, copyright owners would be denied their right to enforce their copyrights against infringers for extended periods, and in some cases would lose the ability to do so altogether. A nonstatutory “special handling” procedure offered by the Copyright Office is no answer because its availability is discretionary, costs hundreds of dollars, and there is no guaranteed turnaround time.

Congress had no reason to expose copyright owners to that sort of legal limbo. On the contrary, its goal in drafting the 1976 Act was to preserve copyright *6 owners’ ability to enforce their statutory rights in a timely manner through judicial intervention against infringers. ARGUMENT

I. A COPYRIGHT OWNER THAT COMPLIES WITH THE REGISTRATION REQUIREMENTS OF THE COPYRIGHT ACT IS ENTITLED TO SEEK TIMELY INJUNCTIVE AND OTHER RELIEF IN COURT

A. The Ability To Seek Judicial Relief Against Infringers Is An Essential Feature Of The U.S. Copyright System That Congress Did Not Intend To Diminish Based On Administrative Delay.

Copyright attaches to original works the moment they are fixed in a tangible medium, 17 U.S.C. § 102(a), and not as a consequence of any certificate issued by the Copyright Office,see id. § 408(a) (“[R]egistration is not a condition of copyright protection”). But copyrights are not self-enforcing. Because copyright owners must sue for infringement to enforce their exclusive statutory rights, the ability to take legal action is the central statutory mechanism by which the Act’s substantive protections are enforced. Indeed, as this Court observed nearly 80 years ago in Washingtonian Publishing Co. v. Pearson, 306 U.S. 30, 39-40 (1939), a copyright is of “no value” to its Owner if it cannot be effectively enforced in the courts. That principle is particularly true where a work is subject to significant ongoing infringement, as is often the case with newly released recordings in the online *7 environment. Without the ability to obtain prompt injunctive relief against infringers in such a circumstance, a copyright owner cannot meaningfully enforce its property rights. See Part III.B, infra.

Section 501(b) of the Copyright Act provides that a copyright owner “is entitled, subject to the requirements of section 411, to institute an action for any infringement of” the owner’s rights. 17 U.S.C. § 501(b). Section 411(a), in turn, provides that an infringement suit may be instituted by the owner of a United States work3 after “preregistration or registration of the copyright claim has been made in accordance with [title 17].” Id. § 411(a).4

Respondents maintain that a copyright owner’s ability to obtain judicial relief, including an injunction to halt ongoing infringement, must await definitive action by the Copyright Office even when the copyright owner has satisfied the requirements for registration. But the text, structure, and purpose of the Copyright Act do not support that interpretation.

The Copyright Act provides that the effective date of a copyright registration is the date on which “an application, deposit [of copy or copies], and fee, which are *8 later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration,” are received by the Copyright Office. 17 U.S.C. § 410(d). Under this statutory framework, then, either the Copyright Office or a court may make a determination concerning the acceptability of the materials submitted to the Office for registration, with the effective date of the registration being the date as of which compliant materials were received by the Copyright Office.

As this structure and provision for the effective date of registration demonstrate, Congress designed section 410(d) to account for the possibility of refusal as well as “the inevitable timelag” between the copyright owner’s fulfillment of registration requirements and the Copyright Office’s issuance of a certificate. H.R. Rep. No. 94-1476, 94th Cong., 2d Sess., at 157 (1976). Because Congress acknowledged the delay and took steps in section 410(d) to alleviate any adverse impact that delay could have on a copyright owner, it would contravene Congress’s intent to read in a requirement that would restrict a copyright owner’s enforcement rights based on the very administrative delay Congress sought to overcome. See FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 133 (2000) (“all parts” of a statute should be read together as a “harmonious whole”).

Within this framework, the provision of section 411(a) that an infringement action may be instituted once “registration … has been made” is best understood as referring to action by the copyright owner - i.e., the owner’s having fulfilled the requirements for*9 making registration by depositing the work, and submitting an application and appropriate fee to the Copyright Office. See 17 U.S.C. § 408 (owner may obtain registration by delivering such materials to Copyright Office). The House and Senate Judiciary Committee reports accompanying the 1976 Copyright Act both confirm that under section 411(a), a copyright owner “cannot enforce his rights in the courts until he has made registration.” H.R. Rep. No. 94-1476, 94th Cong., 2d Sess., at 157 (1976); S. Rep. No. 94-473, 94th Cong., 1st Sess., at 139 (1975) (emphasis added). The reports thus plainly indicate that the registration requirement of 411(a) is a responsibility imposed on the copyright owner - not the Copyright Office.

Section 411(a)’s text reflects that approach by affirming a copyright owner’s right to sue for infringement notwithstanding the Copyright Office’s refusal of registration. Section 411(a) requires that a copyright owner that chooses to proceed in this manner provide notice of the suit to the Register of Copyrights. Section 411(a) does not, however, specify that action by the Copyright Office one way or another is a prerequisite to suit. Nor does it mandate - as Congress could easily have done - that absent a refusal, a certificate of registration is required to sue. Instead, Congress empowered “court[s] of competent jurisdiction” overseeing infringement actions to determine the acceptability of the “application, deposit, and fee” and to confirm a copyright owner’s ability to sue as necessary. 17 U.S.C. § 410(d).

In marked contrast to section 411(a), section 410(c) provides that, in certain circumstances, “a certificate*10 of registration” from the Copyright Office “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate” in an infringement action. 17 U.S.C. § 410(c). While a certificate can thus provide a copyright owner some benefit in litigation, there is no requirement that the copyright owner obtain and submit a certificate, or be denied a certificate, before the owner canfile the suit. Indeed, section 410(c) is compelling proof that, if Congress had intended to require a plaintiff to produce a certificate of registration to sue under section 411(a), it knew how to draft a statute containing such a requirement.

1. Copyright registration is governed as a general matter by section 408 of the Copyright Act, which provides that “the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim by delivering to the Copyright Office the deposit specified by this section, together with the application and fee specified by sections 409 and 708.” 17 U.S.C. § 408(a) (emphasis added). This language indicates that a copyright owner makes registration of a work by satisfying three criteria. First, the owner must deposit the required copies of the subject work with the Copyright Office, as determined by section 408(b) and regulations thereunder. See id. § 408(b). *11 Second, the owner must file a registration application that provides basic information about the work, such as the name and address of the claimant, the title of the work, and year in which the work was completed. See id. § 409. Third, the owner must pay the Copyright Office the appropriate registration fee.See id. § 708(a)(1); 37 C.F.R. § 201.3.

Section 408(a) speaks in terms of a copyright owner’s “obtain[ing]” registration of a work by fulfilling the three requirements, and the interaction of section 408 with section 405(b) shows that registration is “made” in that manner. Section 405(b) immunizes a narrowly defined class of “innocent” infringers from liability for actual or statutory damages. 17 U.S.C. § 405(b). That immunity is limited, however, to “infringing acts committed before receiving actual notice that registration for the work has been made under section 408.” Id. Section 405(b) thus uses the same syntax as section 411(a) - registration “has been made” - and links that process to section 408, which, as noted, permits copyright owners to obtain registration by depositing copies of the work, filing an application, and paying a fee. That linkage is strong evidence that registration is “made” in the same way for purposes of section 411(a) - i.e., by the copyright owner rather than the Copyright Office.5

*12 Section 408(c)(3) provides additional support for this reading. Section 408(c)(3) explains that “a single renewal registration” for a pre-1978 work “may be made for a group of works by the same individual author … upon the filing of a single application and fee.” 17 U.S.C. § 408(c)(3) (emphases added). A copyright owner files an application and pays the fee, such that registration under this

provision is “made” by the copyright owner - just as the owner makes registration under section 411(a) by delivering to the Copyright Office the work at issue, an application, and the appropriate fee.

Another subsection of section 411 regarding registration and civil infringement actions further confirms Petitioner’s reading of subsection (a). Section 411(c) permits a copyright owner to file suit against an infringer for a work “consisting of sounds, images, or both” that is fixed simultaneously with transmission if, among other things, “the copyright owner … makes registration for the work, if required by subsection (a), within three months after its first transmission.” 17 U.S.C. § 411(c) (emphasis added). This provision expressly designates the copyright owner as the party that “makes registration,” without *13 referring to action by the Copyright Office. Moreover, section 411(c) cross-references section 411(a) immediately after, indicating that “the copyright owner … makes registration for the work,” thus offering additional clear proof that Congress intended that the copyright owner, and not the Copyright Office, “makes registration” under section 411(a).

Section 412, as well, employs the phrase “registration is made” to identify action taken by the copyright owner. Section 412 limits the remedies available in infringement suits in some circumstances; it mandates that a court may not award statutory damages or attorney’s fees for any infringement that “commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” Id. § 412(2) (emphasis added). Apart from negating the right to bring timely action to address infringement, to say that “registration is made” only after the Copyright Office issues a certificate would undermine the ability of a copyright owner to seek statutory damages and attorneys’ fees even when the owner has promptly submitted its registration materials upon publication - directly contrary to Congress’ design.

2. Respondents’ suggestion that section 408(f)’s preregistration provision and section 411(c)’s live broadcast provision mitigate the severe consequences of their statutory interpretation is misleading and not borne out by experience.

*14 Section 408(f) permits preregistration of certain categories of unpublished works in the Register’s discretion while the works are “being prepared for commercial distribution.” Section 411(c) authorizes injunctive relief in the case of live broadcasts that are fixed simultaneously with transmission. These provisions exclude finished and published works, which account for the vast majority of works that copyright owners seek to register, from their specialized procedures. Notably, only a tiny fraction - 0.17 percent - of all registrations processed by the Copyright Office in 2017 were preregistrations. See U.S. Copyright Office, Fiscal 2017 Annual Report, https://www. copyright.gov/reports/annual/2017/ar2017.pdf. Moreover, both provisions are conditioned upon follow-up registration by the copyright owner. Indeed, section 411(c) requires that the owner “mak[e] registration for the work, if required by subsection (a), within three months after its first transmission.” 17 U.S.C. § 411(c). Under Respondents’ reading of the statute, it is unlikely that an owner could successfully “make registration” within the three-month window given the current lag time at the Copyright Office.See Part III.A, infra.

*15 II. IN ENACTING SECTION 411(a), CONGRESS SOUGHT TO ENSURE THAT THE COPYRIGHT OFFICE WOULD NOT BE A BARRIER TO A COPYRIGHT OWNER’S RIGHT TO TIMELY JUDICIAL RELIEF AGAINST INFRINGERS

A. This Court’s Longstanding Presumption In Its Washingtonian Opinion Forecloses Respondents’ Interpretation.

Congress enacted the Copyright Act of 1976 against the backdrop of this Court’s decision in Washingtonian Publishing Co. v. Pearson, 306 U.S. 30 (1939), which established a strong presumption in favor of interpreting the Copyright Act to preserve a copyright owner’s exclusive rights.

In Washingtonian, the Court addressed the requirements for filing an infringement suit under an earlier statutory framework, the Copyright Act of 1909. See 306 U.S. at 36-42. The defendant in Washingtonian, an alleged infringer of magazine articles, argued that the plaintiff’s suit could not proceed because the plaintiff had not deposited copies of the articles “promptly” with the Copyright Office, as required under that earlier statute, but instead had waited until 14 months after publication. See id. at 35-36. Although the plaintiff deposited the required copies before filing suit, the defendant maintained that plaintiff’s delay foreclosed the action.See id. at 39.

The Court rejected that argument. Observing that “promptly” was not defined in the 1909 Act, the Court *16 declared that “forfeiture[]” of a copyright owner’s right to sue is “never to be inferred from doubtful language.” Id. at 42. Although there were “[p] lausible arguments” for the defendant’s reading of the statute, mere plausibility was not enough to preclude copyright owners from enforcing their exclusive rights, the value of which “depended upon the possibility of enforcement.” Id. at 39.

Congress was aware of the Washingtonian decision in crafting the 1976 Act,6 and legislated against the backdrop of Washingtonian’s clear-statement rule in enacting section 411(a). Cf. Am. Broad. Companies, Inc. v. Aereo, Inc., 134 S. Ct. 2498, 2505 (2014) (interpreting

other provisions of the 1976 Copyright Act enacted by Congress in response to this Court’s decisions in Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968), and Teleprompter Corp. v. Columbia Broad. Sys., Inc., 415 U.S. 394 (1974)).

Here, where the language of the statute as a whole supports Petitioner’s reading, it would be especially unfaithful to Congress’ purpose to read into section 411(a) a forfeiture of the essential rights of copyright on account of administrative delay by the Copyright Office. Such an encroachment on a copyright owner’s intellectual property is neither mandated by section 411(a)’s text nor consistent with the Act’s overall structure or purpose. As in Washingtonian, the Court should instead interpret section 411(a) to preserve the *17 ability of copyright owners to enforce their exclusive rights. See 306 U.S. at 42.

B. Congress’ Rejection Of A Pre-Suit Mandamus Requirement In The 1976 Act Validates Petitioner’s Reading.

In the Copyright Act of 1909, Congress had provided that “[n]o action or proceeding shall be maintained for infringement of copyright in any work until” the statute’s requirements for “deposit of copies and registration of such work have been complied with.” 17 U.S.C. § 12 (1939). Some courts interpreted this precursor to section 411(a) as barring a copyright owner from suing for infringement if the Copyright Office refused to register the work (or works) at issue, including the Second Circuit inVacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 640-41 (2d Cir. 1958). Under the rationale of Vacheron, a copyright owner was required to first bring a separate mandamus action against the Register to compel issuance of a certificate of registration before filing an infringement action.See id.

Congress paid close attention to the Vacheron outcome in crafting the 1976 Act. A study on copyright registration authorized by Congress to aid in overhauling the Copyright Act, explained that Vacheron “appear[ed] to go the whole way in holding that the plaintiff cannot maintain an infringement action without having procured a registration certificate.” Benjamin Kaplan,Study No. 17 - The Registration of Copyright at 31 n.* (Aug. 1958). Professor Kaplan expressed concern with such an approach: “Surely [the *18 prerequisite of deposit and registration] cannot mean that a claimant is altogether barred from an infringement action where the Register has wrongfully refused to issue a certificate; for it is agreed that the Register’s determination is not conclusive.”Id.

Congress responded to this concern by “alter[ing] the [then-] present law as interpreted in [Vacheron].” H.R. Rep. No. 94-1476, at 157 (citing Vacheron, 260 F.2d at 237). To ensure that copyright owners would not lose valuable rights as a consequence of the Copyright Office’s administrative role, the 1976 Act altered the 1909 Act rule by expressly permitting copyright owners to sue for infringement without a certificate in hand. See 17 U.S.C. § 411(a); see also H.R. Rep. No. 94-1476, at 157. The effective date of registration was established as the date on which the required application, deposit of the work, and fee were submitted to the Office, as determined either by the Register or “a court of competent jurisdiction.” 17 U.S.C. § 410(d). With these changes, Congress intended to address not only “the possibility that a court might later find the Register wrong in refusing registration,” but also “the inevitable timelag between receipt of the application and other material and the issuance of [a] certificate.”See H.R. Rep. No. 94-1476, at 157; S. Rep. No. 94-473, at 139.

Congress’ rejection of the Vacheron approach underscores the considered judgment that the Copyright Office is not a gatekeeper for the judicial enforcement of copyrights. Although the Copyright Office plays an important role in administering the Copyright Act, its function regarding registration is a limited one. Unlike the Patent Office, the Copyright Office does not*19 compare or assess the work deposited against prior material. As explained by Professor Kaplan in reporting to Congress, “the [copyright] examiner does not and cannot investigate at large …. He is certainly not expected to check whether the work duplicates a previously copyrighted work or a work in the public domain.” Kaplan at 35; see Caruthers Berger, Study No. 18 - Authority of the Register of Copyrights to Reject Applications for Registration, at 94 (Mar. 1959) (“The functions of the Register in regard to the registration of claims may be characterized as ministerial.”); see also, e.g., Compendium of U.S. Copyright Office Practices §§ 309.1 (Office “will not compare the deposit copy(ies) with other works” in determining whether a work is copyrightable); 309.2 (“Ordinarily, the Office will not conduct its own factual investigation to confirm the truth of the statements made in the application.”).

III. RESPONDENTS’ RULE WOULD DENY COPYRIGHT OWNERS MEANINGFUL PROTECTION OF THEIR STATUTORY RIGHTS

A. The Copyright Office Typically Takes Months And Sometimes Years To Carry Out Its Administrative Function And Issue A Certificate.

Due to the human and technological constraints of the Copyright Office, the gap between when a copyright owner submits its registration materials to the Office and the Office’s issuance of a certificate of registration is significant - a span of seven to nine months on average and more than two years in some *20 instances. See U.S. Copyright Office, Registration Processing Times, https:// www.copyright.gov/registration/docs/processing-times-faqs.pdf (accessed Aug. 31, 2018). As noted above, Congress recognized a

“time-lag” in the registration function when it enacted the 1976 Act, H.R. Rep. No. 94-1476, at 157, and delays remain “a source of constant concern” today. Oversight of the U.S. Copyright Office: Hearing Before the Subcomm. on Courts, Intellectual Property, and the Internet of the H. Comm. on the Judiciary, 113th Cong. 8-9 (2014) (statement of Maria Pallante, Register of Copyrights).

The lag time has been increasing in recent years. Between 2012 and 2015, the average processing time from online submission to issuance of a certificate rose from 3.1 months to 4.4 months, while the average processing time for paper submissions rose from 4.8 months to 13.5 months. FY 2016 Appropriations Questions for the Record, H. Comm. on Appropriations (Mar. 10, 2015). The current processing of online submissions averages from seven to nine months and for paper submissions is from nine to 16 months. See Registration Processing Times, supra, at 1. Consistent with this trend, the Copyright Office began fiscal year 2016 with 249,000 open claims in the online registration system but ended the year with more than 316,000 claims in the system. See Fiscal 2016 Annual Report, Copyright Office, https://www.copyright.gov/reports/annual/2016/ar2016.pdf.

Amici’s members experience these delays firsthand. Music publishers and record companies expend significant resources to register copyrights for musical works and sound recordings, which constitute *21 the core assets of and sources of income for the creators they represent. Individual songwriters and composers, as well, need to register their works to ensure enforceability of their copyrights. And the wait from the time of submission to issuance of certificate can be daunting. In the experience ofAmici ’s members, delays of a year or more are not uncommon.

To cite recent examples, on April 11, 2017, a music publisher submitted its registration materials for a musical work written by Justin Timberlake and four other songwriters titled “Hair Up.” See Copyright Office, Case No. 1-4853126911.7 Although the registration submission included the required payment, deposit of the work, and application, the Office still has not issued a certificate of registration or refused to do so - a delay of 14 months and counting. Similarly, registration materials for a musical work titled “#1 Record for Christmas” by Neil Diamond were submitted to the Copyright Office on February 2, 2017, with all of the statutory requirements completed on that date. See Copyright Office, Case No. 1-4399057193. The certificate of registration has yet to be issued - a delay of more than 16 months.

Indeed, the administrative delay at the Copyright Office sometimes exceeds the three-year limitations period to sue for infringement, and could eliminate a *22 copyright owner’s right to sue altogether if Respondents’ interpretation of section 411(a) were adopted.8 For instance, a music publisher submitted its application and fee for “Just Another Dude,” a musical work by David Julca and three other songwriters, on August 17, 2015, and submitted the deposit required by section 408(a) shortly thereafter. Nevertheless, more than three years later, neither a certificate nor a refusal has issued.See Copyright Office, Case No. 1-2645541581.

Amici’s members who register sound recordings report similar experiences. Depending upon whether the sound recording deposit is provided in a digital or physical format, the typical delay for issuance of a certificate ranges from five to 11 months, but - as in the case of musical works - can sometimes exceed three years. The wait time with respect to the album art accompanying a physical product, which is also eligible for registration, can be lengthier than that for the music.

Although the Copyright Office offers a “special handling” procedure for an added fee to expedite its administrative function, that does not solve the problem. The “special handling” accommodation is not a statutory requirement, but rather a voluntary procedure implemented by the Office and made available “at the discretion of the Register of Copyrights in a limited number of cases.”Policy Decision Announcing Fee for Special Handling of Applications for Copyright Registration, 47 Fed. Reg. 19,254 (May 4, 1982); see *23 also Copyright Office Compendium § 623.2 (special handling request may be denied). The Copyright Office may refuse a “special handling” request if it deems the request insufficiently justified or simply because it lacks the capacity based on workload to expedite the process. Copyright Office Compendium § 623.2. Moreover, the procedure does not ensure that a copyright owner will receive a response within a particular time; the Office attempts to process expedited requests within five working days, but it expressly disclaims any guarantee that it will meet that target and is not under any obligation to do so. See id. § 623.4.

The fee for “special handling” (which is in addition to the regular registration fee) is currently $800, and the Copyright Office recently proposed to raise it to $1,000. 83 Fed. Reg. 24,054, 24,060 (May 24, 2018). In the current online environment, digital song files can be readily and rapidly distributed without authorization to others via the Internet. A single infringer may be infringing hundreds or even thousands of works of a record company or music publisher, many of them still awaiting a registration certificate. “Special handling” may be prohibitively expensive in such a case. Moreover, the cost of paying an additional $800 or $1000 per registration to file suit for an injunction may be beyond the reach of smaller publishers or labels, to say nothing of individual music creators. But even if it is feasible for a copyright owner to pay the required fees, the Copyright Office may lack the capacity to handle a large number of requests in an expedited fashion.

*24 B. To Delay For Months Or Years A Copyright Owner’s Right To Seek Injunctive Or Other Judicial Relief Effectively Abrogates That Right.

The right of a copyright owner to seek judicial relief against infringement is perhaps the most fundamental right recognized under copyright law. Since at least 1710, with the Statute of Anne, the first English copyright statute, copyright owners have been afforded the right to sue for infringement of their works. See Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 349-50 (1998). In the United States, this right has been recognized since before the adoption of the Constitution, and it has been part of federal copyright law since the first federal copyright statute, the Copyright Act of 1790.See id. The need to afford copyright owners the right to seek judicial relief is obvious - a copyright lacks value if its creator cannot enforce it through the courts against infringers. See Washingtonian, 306 U.S. at 40 (“Without right of vindication a copyright is valueless.”). Injunctive relief against ongoing infringement is particularly significant to protect the exclusivity of a copyright.See 17 U.S.C. § 502(a) (court may award injunction to “prevent or restrain infringement of a copyright”).

Congress enacted section 411(a) and other provisions of the Act as incentives for copyright owners to register their works under a voluntary system and to ensure a flow of deposit materials to the Library of Congress.See H.R. Rep. No. 94-1476, at 150 (finding that the 1976 Act’s various “increased inducements for voluntary registration and deposit” would result in *25 “a more effective deposit system” for the Library of Congress). The incentives include the ability to seek legal redress against infringers, a prima facie presumption of validity of a copyright in litigation, and entitlement to statutory damages and attorneys’ fees. See 17 U.S.C. §§ 410-12. In providing such incentives, Congress did not mean to defeat copyright owners’ right to sue for infringement. A reading of the statute that permits the filing of an action once the required registration materials have been submitted by the owner to the Copyright Office is fully consistent with Congress’ objectives, as a copyright owner has no less an incentive (and in fact may have a greater incentive) to register its works due to the availability of suit. See Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 620 (9th Cir. 2010) (goal of registration “is accomplished equally by the registration and application approach”).

On the other hand, to delay the right to sue infringers until issuance or refusal of a certificate by the Copyright Office would curtail, and in some cases eliminate, for no discernable reason, a copyright owner’s ability to enforce its exclusive rights. As a leading commentator has explained, such a rule would consign copyright owners to a “legal limbo” while they wait for an under-resourced agency to take action. 2 Nimmer on Copyright § 7.16[B][3][b] [ii]. This scenario makes no sense in light of the overall design and purpose of the 1976 Act. See United States v. Hayes, 555 U.S. 415, 426 (2009) (relying on “[p]ractical considerations” in interpreting statute).

*26 For music creators and owners, such an approach is particularly pernicious because digital piracy of musical works and sound recordings works is especially prevalent at the time of initial release. At the same time, this is the period during which a work may have its highest earning potential. The inability to seek an injunction until the Copyright Office is able to act deprives music copyright owners of the most basic right of a copyright owner to protect its works against infringement.

Section 411(a) should not be read “in a vacuum” but in context and “with a view to [its] place in the overall statutory scheme.” Roberts v. Sea-Land Servs., Inc., 566 U.S. 93, 101 (2012). As demonstrated by the statutory text and confirmed by the structure, purpose, and legislative record of the 1976 Copyright Act, an interpretation of section 411(a) that diminishes copyright owners’ exclusive rights by undermining the ability to enforce them in court is not only misguided, but the opposite of what Congress intended and enacted as law.

*27 CONCLUSION

For the foregoing reasons, the Eleventh Circuit’s judgment should be reversed.

Respectfully submitted.

Jacqueline C. Charlesworth Covington & Burling LLP 620 Eighth Avenue New York, NY 10018 (202) 841-1000 [email protected]

Beth S. Brinkmann Counsel of Record

Kevin F. King Rafael Reyneri Covington & Burling LLP 850 Tenth Street, NW Washington, DC 20001 [email protected] (202) 662-6000 Counsel for Amici Curiae

September 4, 2018

*1A APPENDIX: DESCRIPTIONS AND INTERESTS OF AMICI CURIAE

1. The National Music Publishers’ Association (NMPA) is the principal trade association representing the U.S. music publishing and songwriting industry. Over the last 100 years, NMPA has served as a leading voice representing American music publishers before Congress, in the courts, within the music, entertainment, and technology industries, and to the listening public. NMPA’s membership includes major music publishers affiliated with record labels and large entertainment companies as well as independently owned and operated music publishers of all catalog and revenue sizes. Compositions owned or controlled by NMPA’s hundreds of members account for the vast majority of musical works licensed for commercial use in the United States

2. The Recording Industry Association of America (RIAA) is a nonprofit trade organization representing the American recording industry. RIAA supports and promotes the creative and financial vitality of the major recorded music companies. Its members are the music labels that comprise the most vibrant record industry in the world. RIAA members create, manufacture, and/or distribute approximately 85 percent of all legitimate recorded music produced and sold in the United States. In support of its members, the RIAA works to protect the intellectual property and First Amendment rights of artists and music labels; conducts consumers consumer, industry, and technical research; and monitors and reviews state and federal laws, regulations, and policies. The *2a RIAA protects the ability of the music business to invest in new brands and new music and, in the digital arena, to give online services space to continue to prosper.

3. The American Society of Composers, Authors and Publishers (ASCAP), the first performing rights organization (PRO) in the United States, was formed in 1914 at the behest of composing legends Victor Herbert, Irving Berlin, and John Phillip Sousa. Its mission is to enable American music authors to receive fair remuneration for the public performance of their works. ASCAP’s over 670,000 songwriters, lyricists, composers, music publishers, and foreign society members grant the society a nonexclusive right to license public performances of their works. As a PRO, ASCAP offers blanket licenses to a wide variety of users and also engages in enforcement efforts to protect its members’ copyrights.

4. Broadcast Music, Inc. (BMI), a global leader in music rights management, was founded in 1939 by forward-looking thinkers who wanted to represent songwriters in emerging genres such as jazz, blues, and country, and to protect the public performances of their music. BMI represents the public performance rights in nearly 13 million musical works created and owned by more than 800,000 songwriters, composers and publishers. As a PRO, the company negotiates music license agreements for the public performance of nondramatic musical works and distributes the fees it generates as royalties to its affiliated writers and publishers. BMI also serves as advocate for the value of music, representing its members’ interests in the courts and to Congress.

*3a 5. The Nashville Songwriters Association International (NSAI) is the world’s largest not-for-profit trade association advocating for the interests of songwriters, with approximately 5,000 members and 100 chapters in the United States and ten other countries. Founded in 1967 by Eddie Miller, Marijohn Wilkin, Kris Kristofferson, Felice and Boudleaux Bryant, Liz and Casey Anderson, and others, NSAI is dedicated to protecting the rights of songwriters in all genres of music and addressing needs unique to the songwriting profession. In addition to its legal and legislative advocacy work, NSAI offers programs and services designed to provide education and career opportunities for songwriters at every level. It also owns The Bluebird Cafe, a legendary songwriter performance venue in Nashville, Tennessee.

6. Songwriters of North America (SONA) is a grassroots advocacy organization founded in 2015 by songwriting partners and co-executive directors Michelle Lewis and Kay Hanley to advocate for the rights of songwriters in the digital age. A fast-growing organization, SONA has a membership of over 650 full-time, professional songwriters who devote their extra time and energy to the defense of their creative intellectual property before the courts and in Congress. SONA has played a leading role in challenging

unfairness to songwriters under current U.S. music licensing laws and advocating for comprehensive legislation to create a more modern and balanced licensing system, currently pending before Congress.

Footnotes 1 No party or counsel for any party authored any part of this brief or made a monetary contribution intended to fund the preparation or submission of this brief. All parties have provided blanket consent to the filing ofamicus briefs. 2 Amici work on behalf of music publishers, record labels, songwriters, and composers to protect, promote, and advance their interests on legislative, litigation, and regulatory matters. The Appendix to this brief provides more detailed descriptions of Amici. 3 The copyright owner of a non-U.S. work is not required to register before commencing a legal action. See 17 U.S.C. § 411(a) (limiting restriction to “action[s] for infringement of the copyright in any United States work”). As a result, under Respondents’ rule, the owners of U.S. works would face significant delays as compared to owners of foreign works in enforcing their rights. 4 The preregistration procedure, which applies only to incomplete, unpublished works still being “prepared for commercial distribution,” 17 U.S.C. § 408(f), is not at issue in this case. 5 Petitioner’s reading of the Copyright Act is consistent with Congress’s use of similar language in other statutes to indicate that registration is “made” by filing a document with a government agency or official. For example, 2 U.S.C. § 505 requires United States Senators to “register quarterly with the Secretary of the Senate” their dissemination of “mass mailings” using the franking privilege. “Such registration shall be made by filing with the Secretary a copy of the matter mailed and” additional information regarding the mailing. Id. In other words, the Senator, not the Secretary, “makes” registration. Other statutes likewise speak of “registration” being “made” by the submitting party rather than the recipient. See, e.g., 15 U.S.C. § 1173(a) (4) ( “[R]egistration is made” by persons engaged in manufacturing, buying, repairing, and selling “gambling device[s].”); 45 U.S.C. § 362(i) ( “[R]egistration is made” by unemployed railroad employees.) 6 See, e.g., Copyright Law Revision, Hrg. Before the Subcomm. on Patents, Trademarks, and Copyrights of the S. Comm. on the Judiciary, 89th Cong., 1st Sess., at 101 (Aug. 1965) (statement of John Schulman, Chairman for Revision of Copyright Law, American Bar Association) (discussing Washingtonian). 7 All references to matters pending before the Copyright Office are based on records from the Office’s eCO electronic registration system. 8 “No civil action shall be maintained under the provisions of [Title 17] unless it is commenced within three years after the claim accrued.” 17 U.S.C. § 507(b).

2018 WL 4251844 (N.Y.Sup.) (Trial Pleading) Supreme Court of New York. New York County

DOW JONES & COMPANY, INC., Plaintiff, v. Contessa BOURBON, Defendant.

No. 158283/2018. September 6, 2018.

Complaint

Joseph Weissman (New York Bar No. 4,864,153), Dow Jones & Company, Inc., 1211 Avenue of the Americas, New York, NY 10036, Telephone: (212) 416-4974, [email protected]; Steven Lieberman (New York Bar No. 1,975,531), Sharon Davis (pro hac vice pending), Rothwell Figg, Ernst & Manbeck, P.C., 607 14th Street N.W., Suite 800, Washington, DC 20005, Telephone: (202) 783-6040, Facsimile: (202) 783-6031, [email protected], [email protected], for plaintiff Dow Jones & Company, Inc.

Index No.

Plaintiff, Dow Jones & Company, Inc. (“Plaintiff” or “Dow Jones”), for its Complaint against Defendant, Contessa Bourbon (“Defendant” or “Ms. Bourbon”), alleges as follows: NATURE OF ACTION

1. This is an action for dilution of trademark arising under the New York General Business Law, N.Y. Gen. Bus. Law § 360-L, and the common law of the State of New York. This action arises from Ms. Bourbon’s pattern of representing that she is a reporter for The Wall Street Journal in order to, inter alia, gain admittance to news conferences and other events and to attract followers on social media, when she is not and has never been a reporter for The Wall Street Journal.

PARTIES

2. Plaintiff, Dow Jones, is a Delaware corporation with its principal place of business at 1211 Avenue of the Americas, New York, New York, 10036. Dow Jones owns and publishes The Wall Street Journal newspaper and operates a website at www.wsj.com. Dow Jones does business throughout the United States, including in this county.

3. On information and belief, Ms. Bourbon’s last known permanent address is 9426 57th Ave., 2nd Floor, Elmhurst, New York 11373. Ms. Bourbon also has an active Facebook account and an active Twitter account, on which she states that she currently lives in New York, New York. JURISDICTION AND VENUE

4. This Court has subject matter jurisdiction pursuant to New York Civil Practice Law and Rules (“C.P.L.R.”) § 301, and because the claims and violations in this action arose under the laws of the State of New York.

5. Venue is proper in New York County pursuant to C.P.L.R. § 503(a) and (c), for at least the reason that Dow Jones has its principal place of business in New York County.

6. On information and belief, Ms. Bourbon is subject to personal jurisdiction in this county by virtue of her last known permanent residence in this State, and having engaged in systematic and continuous contacts with the State of New York. Furthermore, throughout her residence in and visits to the State of New York, Ms. Bourbon has committed tortious acts within the state, pursuant to C.P.L.R. § 302(a)(2).

7. Ms. Bourbon is also subject to personal jurisdiction in New York County pursuant to C.P.L.R. § 302(a)(3) by virtue of her having committed tortious acts without the state causing injury to person or property within the state, such that she should reasonably expect the acts to have consequences in the state.

FACTS

8. Ms. Bourbon is not, and has never been, employed by Dow Jones, as a reporter for The Wall Street Journal, or in any other position or capacity. Ms. Bourbon has never, at any time, had any professional or business relationship with Dow Jones.

9. Despite the lack of any employment relationship between Ms. Bourbon and Dow Jones, Ms. Bourbon has repeatedly represented herself as a journalist employed by The Wall Street Journal since at least February 2015. Ms. Bourbon’s false representations that she is a journalist working for The Wall Street Journal include: (1) representations made in person at various press-related events, including to government officials; and (2) representations made on social media.

10. Ms. Bourbon has a Twitter account under the name “@ContessaBourbon,” for which she has the caption “Journalist for the Wall Street Journal, London Times, Guardian, Washington Post: Queen of BARCELONA.” On this account, she has sent more than 29,000 tweets and has 357 followers. This account has been active since July 2011, and includes numerous posts and photographs of Ms. Bourbon “covering” particular events or “interviewing” certain individuals both in Washington, D.C. and in New York City.

11. For instance, on February 13, 2015, Ms. Bourbon tweeted “I did a Q and A with Apple CEO Tim Cook. Read the New York Times, Wall Street Journal, etc tomorrow.”

12. On February 24, 2015, Ms. Bourbon tweeted “Attended Lunar New Year event & covered awards night at Chelsea Pier elegant waterfront, NY,” and attached a photo of herself at the event.

13. On May 18, 2015, Ms. Bourbon sent three emails to Gerard Baker, then-Editor in Chief of The Wall Street Journal. In one email, Ms. Bourbon states “[i]f I can’t work at the New York Times because of him, I have to fully move to Wall Street Jouran [sic] and London Times. I’m sorry, I may not be able to write news this week…” In another email, Ms. Bourbon submits a “Memorandum” from “Contessa Bourbon, Deputy Managing Editor,” and requests to be paid. She further notes “I’m glad that my proposed ads got published in our newspaper, webpage and magazine. Thanks for everyone’s cooperation.”

14. Upon learning of Ms. Bourbon’s activities, on May 22, 2015, Dow Jones contacted Ms. Bourbon via email asking that she immediately cease and desist from claiming that she worked for The Wall Street Journal or identifying herself as a journalist for The Wall Street Journal. A true and correct copy of the letter is attached hereto as Exhibit A. Ms. Bourbon did not respond.

15. When Ms. Bourbon continued to represent that she was a reporter for The Wall Street Journal, Dow Jones again contacted Ms. Bourbon via email and Federal Express mail to her Elmhurst, New York address asking that she immediately cease and desist from claiming that she worked for The Wall Street Journal or identifying herself as a journalist for The Wall Street Journal. A true and correct copy of the letter, sent on November 10, 2017, is attached hereto as Exhibit B. Again, Ms. Bourbon did not respond.

16. On December 7, 2017, Ms. Bourbon sent an email to a congressional staff member, requesting the remarks of Congressman Gregory Meeks from a hearing the previous day. The subject line of the email is “From journalist, a request” and the signature line of the email states “Contessa Bourbon, Freelance for Wall Street Journal.”

17. Through her online presence and social media postings, Ms. Bourbon continues to falsely represent that she is a reporter for The Wall Street Journal. On Twitter, Ms. Bourbon’s profile caption still includes “Journalist for the Wall Street Journal,” and in her tweets she repeatedly asserts that she has reported on various news events and that readers should “Read WSJ” to see her work. For example, on May 27, 2018, she tweeted “NYT and Wall Street Journal Science & technology editors want me to write more technology articles & cover it. I don’t know tech events in DC. They have to tell me tech or science events I can cover.”

18. As a more recent example, on August 13, 2018, she tweeted “I did a Q & A w new Zimbabwe President Mnangagwa. Read NYT WSJ Washington Post London Times Guardian, La Vanguardia Spain Le Monde France etc tomorrow. Watch TV news tonight.”

19. Similarly, on August 9, 2018, during a visit to New York, Ms. Bourbon tweeted “I’ve lost Gerry Baker’s office number at WSJ, it’s deleted. Bob Thompson changed his meo email. I can’t call. I knew Bob, wife.”

20. Ms. Bourbon’s Twitter caption and her postings suggesting that her work can be read in The Wall Street Journal or on its website are likely to create confusion as to whether her Twitter account represents the work of a journalist for The Wall Street Journal.

21. On December 13, 2017, Dow Jones submitted a complaint to Twitter alleging that, by asserting she was a “Journalist for the Wall Street Journal” on her Twitter profile, that Ms. Bourbon was violating the Twitter Rules. A representative for Twitter responded to Dow Jones via email on December 18, 2017, stating that Ms. Bourbon’s account did not violate Twitter’s impersonation policy. The representative explained that it is up to the user to confirm the information in his or her profile and that Twitter does not mediate disputes, and encouraged Dow Jones to resolve the issue with Ms. Bourbon directly. The representative further stated that “there’s nothing we can do.”

22. Dow Jones submitted two more complaints with Twitter in February 2018 and March 2018, respectively, but was again told that Ms. Bourbon’s account was not in violation of Twitter’s rules and policies. On March 20, 2018, Dow Jones reached out to Twitter via email, asserting that Ms. Bourbon’s account was in violation of Twitter’s trademark policy and requesting that Twitter enforce its policies concerning trademark use and to stop serving as a platform for Ms. Bourbon’s violation of Dow Jones’s trademark rights.

23. Following the email on March 20, 2018, Dow Jones and a legal representative at Twitter spoke over the phone to discuss the matter. The Twitter representative explained to Dow Jones that, in response to Dow Jones’s complaints, Twitter had contacted Ms. Bourbon to ask whether she was actually affiliated with The Wall Street Journal and that Ms. Bourbon replied in the affirmative. Despite this investigation, and while Twitter mentioned that it would be willing to contact Ms. Bourbon on behalf of Dow Jones, Ms. Bourbon’s Twitter account is still active and she continues to falsely represent that she is a journalist for The Wall Street Journal on her profile page and through her daily tweets.

24. Ms. Bourbon has a Facebook profile under the name “Contessa Bourbon,” on which she has 183 Facebook “Friends” and is followed by 79 people.

25. As in her Twitter posts, Ms. Bourbon posts material on her Facebook page concerning her alleged reporting work on behalf of The Wall Street Journal, both in Washington, D.C. and in New York City. For example, on June 23, 2018, Ms. Bourbon posted that she had written on “art of textile w/ a message of anti-violence” and to “Read WSJ” tomorrow. On May 10, 2018, she posted that she had “[c] overed CNBC Capital Exchange at five star elegant hotel Hay Adams in DC this morning” and included photos of herself at the event.

26. Ms. Bourbon also has three separate Instagram profiles. Under the name “bourboncontessa,” she has 13 followers; under the name “contessabourbon,” she has 25 followers and a caption that states “New York Times, Wall Street Journal, Princess of Barcelona;” and under the name “contessa_bourbon,” she has 50 followers.

27. On September 10, 2015, on her “contessabourbon” Instagram account, Ms. Bourbon posted “Dazzling and valuable Gold exhibit at Asia Society NYC that I covered,” and attached a photo of herself at the event.

28. On February 8, 2016, on her “contessabourbon” Instagram account, Ms. Bourbon posted “Doing interview with an official at Waldorf Astoria hotel suite,” along with a photo of herself in the New York hotel.

29. On March 2, 2016, on her “contessabourbon” Instagram account, Ms. Bourbon posted “Interviewing Jessica Sanchez, finalist of American Idol, after a concert tonight at Lounge 48 NYC,” and attached a photo of herself with the celebrity singer.

30. On March 10, 2016, from the same Instagram account, Ms. Bourbon posted “At Graduate school of CUNY, covering Spanish classic concert,” and again attached a photo of herself at the event.

31. Ms. Bourbon’s social media postings purporting to be made by a journalist for The Wall Street Journal contain unprofessional and misleading posts that reflect negatively onThe Wall Street Journal. Because journalists who work for The Wall Street Journal use Twitter and other social media in their professional capacity, the presence of postings falsely purporting to represent the work of a journalist for The Wall Street Journal harms its reputation.

32. In addition to Ms. Bourbon’s online representations that she is a journalist for The Wall Street Journal, Ms. Bourbon has also falsely claimed to work for The Wall Street Journal in person to gain access to press events and ask questions of event speakers.

33. On March 26, 2018, Ms. Bourbon falsely represented herself as being employed by The Wall Street Journal at an event at the Brookings Institution. When asking a question of the panelists at the event, Ms. Bourbon introduced herself by stating “My name is Contessa Bourbon. I write for the Wall Street Journal and London Times.” She also introduced herself as a reporter for The Wall Street Journal to at least one other attendee who then contacted The Wall Street Journal for clarification as to Ms. Bourbon’s connection to The Wall Street Journal.

34. On May 10, 2018, Ms. Bourbon attended CNBC’s sit down interview with Wilbur Ross, United States Secretary of Commerce, and identified herself to Secretary Ross and the other attendees as being “from the Wall Street Journal and London Times” before asking a question.

35. Ms. Bourbon’s conduct has caused harm to the reputation of The Wall Street Journal and Dow Jones because her conduct is inaccurately attributed to The Wall Street Journal. Her conduct also creates confusion as to which reporter is representing The Wall Street Journal at an event and as to whether an event or interview is actually being reported for The Wall Street Journal. Ms. Bourbon’s false statements to congressional staff members were also inaccurately attributed to The Wall Street Journal, to its detriment.

36. As a result of Ms. Bourbon’s actions, and her refusal to cease and desist from these actions despite repeated requests that she do so, Dow Jones has suffered damage to the reputation of its trademark. Dow Jones’s trademark is associated with, and depends for its value upon, the quality of the reporting performed by its journalists for The Wall Street Journal. By falsely claiming to be a reporter representing The Wall Street Journal, Ms. Bourbon’s conduct has created the likelihood that Dow Jones’s trademark will be diluted and tarnished by a false association with Ms. Bourbon’s conduct and online writings.

COUNT I (N.Y. Gen. Bus. Law § 360-L – Injury to Business Reputation; Dilution)

37. Dow Jones re-alleges and incorporates herein by reference the allegations set forth in paragraphs 1-36 of this Complaint.

38. The Wall Street Journal is a global new organization that provides leading news, information, commentary, and analysis. Founded and published by Dow Jones in New York City since July 8, 1889, The Wall Street Journal engages readers across print, digital, mobile, social, and video. Building on its heritage as the preeminent source of global business and financial news,The Wall Street Journal includes coverage of U.S. and world news, politics, arts, culture, lifestyle, sports, and health. It currently holds 37 Pulitzer Prizes for outstanding journalism.

39. The Wall Street Journal has a global audience of 42.4 million digital readers per month. As of April 2018, The Wall Street Journal had more than 2.4 million print and digital subscribers.

40. Dow Jones owns and has rights to use numerous federally registered trademarks and service marks in connection with its business of news reporting. One such trademark, The Wall Street Journal™ (U.S. Registration No. 408,379), <>, in the Goods and Services Class 38 for “prints and publications,” was registered on August 8, 1944. This particular mark was first used in commerce 128 years ago, in 1889.

41. Dow Jones’s rights in The Wall Street Journal™ trademark and others predate Ms. Bourbon’s use of the marks in connection with her physical impersonations of a reporter for The Wall Street Journal and her online activities where she purports to be the same.

42. Ms. Bourbon’s use of the The Wall Street Journal™ trademark in connection with her physical impersonation of a reporter for The Wall Street Journal and in representing herself online (via her social media accounts including Facebook, Twitter, and Instagram) as the same has caused and will likely continue to cause confusion, or injury to the business reputation of Dow Jones and The Wall Street Journal, or dilution of the distinctive quality of Dow Jones’s trademarks, in violation of Section 360-L of McKinney’s Consolidated Laws of New York Annotated, as amended on January 1, 1997.

43. As a direct and proximate result of Ms. Bourbon’s unauthorized use of the The Wall Street Journal™ trademark in falsely representing herself as a reporter for the famous newspaper, Dow Jones and The Wall Street Journal have suffered and will continue to suffer substantial injury and irreparable damage to their business, reputation and goodwill.

44. By using the The Wall Street Journal™ trademark without Dow Jones’s approval or consent, and with knowledge of Dow Jones’s rights in its The Wall Street Journal™ trademark, Ms. Bourbon has willfully infringed upon the rights of Dow Jones, with intent to trade upon the goodwill associated with The Wall Street Journal™ and other trademarks.

45. Dow Jones has been, is now, and will continue to be irreparably harmed by Ms. Bourbon’s aforementioned wrongful acts, unless enjoined by this Court. There is no adequate remedy at law for the harm caused by the wrongful acts alleged herein.

46. Wherefore, Dow Jones prays for the relief requested below.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff, Dow Jones & Company, Inc., prays that the Court enter judgment against Ms. Bourbon, as follows:

A. ordering preliminary and permanent injunctive relief restraining and enjoining Ms. Bourbon pursuant to N.Y. Gen. Bus. Law § 360- L;

B. awarding Dow Jones its costs and attorneys’ fees; and

C. awarding Dow Jones such other and further relief as this Court deems just and proper.

Dated: September 6, 2018

Respectfully submitted,

By: /Steven Lieberman/

Joseph Weissman (New York Bar No. 4,864,153) ______Telephone: (212) 416-4974 [email protected]

Dow Jones & Company, Inc. 1211 Avenue of the Americas New York, NY 10036

Steven Lieberman (New York Bar No. 1,975,531) [email protected] Sharon Davis (pro hac vice pending) [email protected] ROTHWELL FIGG, ERNST & MANBECK, P.C. 607 14th Street N.W., Suite 800 Washington, DC 20005 Telephone: (202) 783-6040 Facsimile: (202) 783-6031

Counsel for Plaintiff Dow Jones & Company, Inc.

2018 WL 4237617 (Trademark Tr. & App. Bd.)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

IAC SEARCH & MEDIA, INC. v. ASKBOT, SPA

Cancellation No. 92060041

August 31, 2018

*1 Gerald J. Ferguson of Baker & Hostetler LLP for IAC Search & Media, Inc. ASKBOT, Spa, pro se Before Taylor, Bergsman, and Shaw Administrative Trademark Judges Opinion by Shaw Administrative Trademark Judge:

IAC Search & Media, Inc. (“Petitioner”) has petitioned to cancel Registration No. 4323777, owned by ASKBOT, Spa (“Respondent”), for the mark ASKBOT, in standard characters, for: Downloadable software program for collaboration and information management, namely, for collection of questions, answers and comments, receiving feedback and votes for ranking content and users; Software for embedding widgets with aforementioned functionalities on the websites, in International Class 9; and

Application service provider (ASP) providing to others temporary use of online non-downloadable software for collaboration and information management, namely, for collection of questions, answers and comments, receiving feedback and votes for ranking content and users and embedding widgets providing aforementioned functionalities on the websites of others; Software installation and support services, namely, technical support services in the nature of troubleshooting of computer software with aforementioned functionalities, in International Class 42.1

As grounds for cancellation, Petitioner alleges priority and likelihood of confusion. Petitioner pleaded ownership of the following registrations:2

• Registration No. 3525714 for the mark ASK (standard characters) for: Downloadable computer software for use in providing search engine services which is provided through a browser tool bar, in International Class 9;

Providing consumer product information; providing comparison shopping information, providing online directory information services also featuring hyperlinks to other websites, dissemination of advertising for others via the internet; online advertising services for others, namely, providing advertising space on internet web sites, in International Class 35; and

Computer services, namely, providing search engines for obtaining data on a global computer network, in International Class 42.3

• Registration No. 2412106 for the mark

for: Computer services, namely, providing a search engine based on natural language queries on a global computer network, in International Class 42.4

*2 • Registration No. 3652770 for the mark

for: Downloadable internet browser plug-ins and client server applications in the nature of multi-function tool bar plugins; downloadable computer software for use in providing search engine services which are provided through a browser tool bar, in International Class 9;

Business services, namely, providing links to the web sites of others, namely, retail service providers in the field of consumer electronics, computers, clothing, automobiles, toys and games and a wide variety of other general consumer products; providing links to the websites of others in the field of consumer products and services; promoting the goods and services of others by placing advertisements and promotional displays on electronic sites accessed through computer networks; providing consumer product information; providing comparison shopping information, providing online directory information services also featuring hyperlinks to other websites, dissemination of advertising for others via the internet; online advertising services for others, namely, providing advertising space on websites, in International Class 35;

Providing links to websites of others in the field of entertainment, in International Class 41; and

Providing customized on-line web pages featuring userdefined information, which includes search engines and online web links to other websites; providing on-line directories, indices and searchable databases of websites and computer networks; providing links to web sites of others in the field of computers and technology; computer services, namely, providing search engines for obtaining data on global computer network, in International Class 42.5

• Registration No. 3593278 for the mark

for: Downloadable Internet browser plug-ins and client server applications in the nature of multi-function tool bar plugins; downloadable computer software for use in providing search engine services which are provided through a browser tool bar, in International Class 9; and

Business services, namely, providing links to the websites of others, namely, retail service providers in the field of consumer electronics, computers, clothing, automobiles, toys and games and a wide variety of other general consumer products; providing links to the websites of others in the field of consumer products and services; promoting the goods and services of others by placing advertisements and promotional displays on electronic sites accessed through computer networks; providing consumer product information; providing comparison shopping information, providing online directory information services also featuring hyperlinks to other websites, dissemination of advertising for others via the Internet; online advertising services for others, namely, providing advertising space on websites; providing on-line directories, indices and searchable databases of websites and computer networks, in International Class 42.6

*3 • Registration No. 2463252 for the mark ASK.COM (standard characters) for: Computer services, namely, providing a search engine based on natural language queries on a global computer network, in International Class 42.7

Respondent, in its Answer, denied the salient allegations of the petition and admitted that Petitioner owned the pleaded registrations. Both parties filed briefs and Petitioner filed a reply brief.

I. The Record and Evidentiary Objections

The record consists of the pleadings; by operation of Trademark Rule 2.122, 37 C.F.R. § 2.122, the file of the involved registration; and the following evidence submitted by the parties.

Petitioner’s evidence:

1. Testimonial Deposition of Valerie Combs, Head of Global Communications for Petitioner, with exhibits;8

2. The following exhibits, made of record via notice of reliance:9 a. Printouts from Respondent’s website; b. Printouts from Petitioner’s website; c. Excerpts from Respondent’s Brief in Opposition to Petitioner’s Motion for Summary Judgment; d. Certain of Respondent’s responses to Petitioner’s Requests for Admissions; e. Respondent’s Answers to Petitioner’s First Set of Interrogatories; f. A third-party conference abstract regarding the nature of Respondent’s ASKBOT goods and services; g. Third-party webpages purporting to be evidence of comparable services to Respondent’s ASKBOT goods and services; h. An internet video featuring Ask.com’s former Vice President, Valerie Combs, discussing Ask.com’s question and answer services; and i. An internet video featuring Ask.com’s former and current Chief Executive Officers discussing Ask.com’s business and its question and answer services.

Respondent’s evidence, made of record via notice of reliance:10 1. Printouts from Respondent’s website; 2. Printouts from Petitioner’s website; 3. News stories including the term “askcom” retrieved from the Lexis/Nexis database; 4. Third-party U.S. trademark registrations of ASK-formative marks; and 5. Printouts from an opposition proceeding filed by Petitioner against a third party’s application for the mark ASKVILLE.

Petitioner objects to consideration of certain evidence submitted under Respondent’s Notice of Reliance, namely, ninety-seven news articles from the Lexis/Nexis database for the term “askcom,” third-party registrations of ASK-formative marks, and excerpts from an unrelated opposition in which Petitioner opposed registration of the mark ASKVILLE.11

Regarding Petitioner’s objection to the articles from the Lexis/Nexis database on the grounds of hearsay, the Board routinely accepts printed publications obtained from the Lexis/Nexis database, when filed under notice of reliance, so long as the date and source of each article are clear. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013). That said, printed publications would be hearsay if they were offered to prove the truth of the statements made therein. To the extent that Respondent seeks to rely on the printed publications as evidence of the statements made in the articles, Petitioner’s objection is well taken. However, the articles are acceptable to show that the stories have been circulated to the public. See Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998). We have considered these articles only for that purpose. We have not considered articles from foreign language publications absent evidence that they have been circulated in the United States. Id. at 1405. Petitioner’s objection to the news articles is overruled.

*4 Regarding Petitioner’s objections to the third-party registrations on the grounds of relevance and a lack of evidence of use, the objections are overruled. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 704.03(b)(1)(B) (June 2017). Respondent’s objections to the third-party registrations go to the weight the registrations are to be given rather than their admissibility. Even without proof of use, third-party registration evidence may bear on conceptual weakness if a term is commonly registered for similar goods or services. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).

Petitioner’s objection on the grounds of relevance to selected printouts from its Opposition Proceeding No. 91178765 against registration of the third-party mark ASKVILLE is well taken. Respondent claims “[t]he documents are relevant because Petitioner’s Opposition was Dismissed with Prejudice and Trademark ASKVILLE was permitted to mature into a fully registered record.”12 The fact that an unrelated opposition proceeding was dismissed by the consent of the parties has no relevance to the present proceeding inasmuch as the opposed mark is different from Respondent’s mark, Respondent was not a party to the proceeding, there was no decision on the merits of the opposition, and there are no admissions against interest by Petitioner. Accordingly, Petitioner’s objection is sustained and we have not considered the documents from the ASKVILLE opposition.13

Petitioner also objects to Respondent’s brief as untimely.14 Respondent’s brief was due on July 21, 2017 and was filed on July 22, 2017, i.e., a day late. Given the minimal one-day delay, in the interest of completeness, and because it aids us in framing Respondent’s position, we have exercised our discretion and considered Respondent’s late brief. In view thereof, Petitioner’s motion to strike is denied.

Respondent objects to consideration of Petitioner’s deposition of Valerie Combs on the ground that Respondent did not receive a transcript of the deposition as required by Rule 2.125, 37 CFR § 2.125.15 The deposition of Combs took place on January 9, 2017.16 Respondent claims that it “was not aware of its existence until June 20th, 2017. Failure to receive this transcript on time hampered the ability of the Respondent to prepare its own evidence[.]”17

In response to the objection, Petitioner submitted a declaration and supporting evidence establishing that: 1. On November 23, 2016, “Petitioner served its Pretrial Disclosure Statement on Registrant [via email] identifying a corporate representative of Petitioner and topics that representative could speak on[.]”18

*5 2. On December 21, 2016, Respondent was advised of the upcoming Combs deposition via an email between the parties discussing settlement. Petitioner’s email advises Respondent: “As you are aware, the parties are now in their testimony periods, and we shall be noticing the testimonial deposition of IAC’s witness to be taken in California by the close of IAC’s testimony period. . . . [W]e will be noticing a deposition for January 7 [.]”19 Respondent replied to the email thus confirming it received it.20

3. On December 22, 2016, Petitioner served via email a notice of trial deposition of Valerie Combs to take place on January 9, 2017.21

4. On February 8, 2017, the due date to serve Respondent with the Combs deposition transcript under rule 2.125, Petitioner emailed a copy of the Combs deposition transcript to Respondent’s email address.22 The email included a ZIP compressed file attachment named “ASKBOT -- Deposition of Valerie Combs with Exhibits.zip.”23

Given that Respondent was advised on at least three separate occasions that Petitioner intended to take testimony of its corporate representative, Respondent’s claim that it was “was not aware of [the Combs’ deposition’s] existence until June 20th, 2017” strains credulity. If Respondent did not receive the Combs’ deposition transcript until June 20, 2017, when it was filed with the Board, Respondent’s remedy was “by way of a motion to the Board to reset its testimony and/or briefing periods, as may be appropriate.” TBMP § 703.01(m) (June 2018); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (resetting adverse party’s testimony and/or briefing periods). Respondent’s objection to the Combs’ testimony is overruled.

II. Standing and Priority

In the Board’s December 16, 2015 order granting in part and denying in part Petitioner’s motion for summary judgment on the grounds of likelihood of confusion, the Board granted summary judgment on Petitioner’s standing and priority.24 Accordingly, standing is not an issue. Priority also is not an issue with respect to the goods and services covered by Petitioner’s five pleaded registrations,supra . Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).

III. Likelihood of Confusion

Our determination under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, key considerations include the similarities between the marks and the similarities between the goods or services, the first twodu Pont factors. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA

1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks.”). However, any single factor may play a dominant role in the likelihood of confusion analysis. See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004); Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). Petitioner bears the burden of proving its claim of likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).

*6 We focus our likelihood of confusion analysis on Registration No. 3525714 for the mark ASK, in standard characters. This mark and the identified goods and services are the most similar to Respondent’s mark and goods and services. If we find that there is a likelihood of confusion with this mark, there is no need for us to consider the likelihood of confusion with Petitioner’s other marks. Conversely, if we find there is no likelihood of confusion with this mark, we would find no likelihood of confusion with Petitioner’s other marks as they comprise or incorporate the word ASK with additional matter and identify the same or less closely-related goods or services. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).

We address each of the du Pont factors for which the parties submitted evidence or argument.

A. Similarity of the Goods and Services

We begin with the second du Pont factor, assessing the similarity or dissimilarity of the parties’ goods and services. It is settled that it is not necessary that the respective goods and services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).

Although we consider the relatedness of the goods and services based on the respective identifications set forth in the registrations, “[w]hen identifications are technical or vague and require clarification, it is appropriate to consider extrinsic evidence of use to determine the meaning of the identification of goods [and services].”In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015) (citing Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); In re Trackmobile, 15 USPQ2d 1152, 1154 (TTAB 1990)). Because the goods and services are technical and the respective identifications provide only general information, we consider extrinsic evidence provided by the parties to clarify the specific nature of the goods and services.

Respondent’s software and services are used for “collaboration and information management, namely, for collection of questions, answers and comments, receiving feedback and votes for ranking content and users.” According to Respondent’s website, ASKBOT is used to create “Q&A forums” for “efficient question and answer knowledge management.”25 Respondent states that the “Askbot service enables its clients, mostly companies and educators to create new client-brandable Question and Answer (Q&A) community forums.”26 An excerpt from Respondent’s web page, below, touts some of the features available to third parties seeking to create Q&A forums to answer questions. Users can create their own Q&A forums for “question and answer knowledge management,” choose topics for discussion, and prioritize answers. *7 Petitioner’s goods and services are: Downloadable computer software for use in providing search engine services which is provided through a browser tool bar, in International Class 9;

Providing consumer product information; providing comparison shopping information, providing online directory information services also featuring hyperlinks to other websites,

dissemination of advertising for others via the internet; online advertising services for others, namely, providing advertising space on internet web sites, in International Class 35; and

Computer services, namely, providing search engines for obtaining data on a global computer network, in International Class 42.

In essence, Petitioner is providing search engine services, including a specialized search engine service focused on shopping.27 Although Petitioner offers software in the form of a “tool bar,” the purpose of the tool bar is to provide a dedicated link to Petitioner’s search engine, Ask.com. A search engine is defined as “computer software used to search data (such as text or a database) for specified information” and as “a site on the World Wide Web that uses such software to locate key words in other sites.”28

Generally speaking, the parties’ goods and services both involve providing answers to questions, however, the respective goods and services differ regarding who uses the products and how the answers are provided. Respondent’s goods and services are a programming tool used by third parties to create online forums featuring questions and answers on a particular subject. The Q&A forums are then used by customers of the third parties. Once created, the forums may be on the users’ websites, generally do not appear under the ASKBOT mark, and are sometimes password protected.29 Petitioner’s software and services provide answers to individual questions on any subject, via Petitioner’s Ask.com search engine. In other words, Respondent’s goods and services allow users the ability to create, organize and save both questions and answers for others, whereas Petitioner’s goods and services allow users to directly search the internet without any predetermined search parameters, and the results are neither organized nor saved. The parties’ goods and services thus serve different functions within the context of asking and answering questions on the internet. Nevertheless, the goods and services of the parties are related because both enable end users the ability to obtain online answers to questions, albeit via different methods. Accordingly, despite the differences in the way in which the goods and services are used, we find that the parties’ goods and services are related because they both provide the same end functionality: answering online questions for others.

The du Pont factor regarding similarity of the goods and services favors a finding of a likelihood of confusion.

B. Channels of Trade

*8 We next consider the third du Pont factor regarding the similarity or dissimilarity of established, likely-to-continue trade channels. Neither registration is limited in any way as to channels of trade. Accordingly, the Board must assume that the goods and services are available in all the normal channels of trade to all the usual purchasers for such goods and services. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000); Octocom Sys., Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Respondent states that its ASKBOT products are delivered online “via provision of a subscription-based service that allows to create [sic] client-owned Question and Answer online communities.”30 ASKBOT products and services also are offered via third-party software development websites such as github.com and python.org.31 In contrast, Petitioner’s search engine services are offered for free at Petitioner’s Ask.com web site.32 Petitioner’s “ASK Toolbar is a free software plugin which is sometimes bundled with third- party software products and distributed by third parties such as Oracle.”33

Both parties’ software and services are offered online. But “the mere fact that goods and services may both be advertised and offered through the Internet is not a sufficient basis to find that they are sold through the same channels of trade. The Internet is such a pervasive medium that virtually everything is advertised and sold through the Internet.” Parfums de Couer Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007). The parties’ goods and services are not offered through the same online sources. Respondent’s products are offered through its website and through specialized third-party programming sites such as github.com and python.org.34 Petitioner’s services are offered through its website or bundled with third-party software.

The parties’ goods and services also are offered at significantly different costs to users. Respondent’s services are offered on a subscription basis with plans starting at $15.00 per month and going up to $45.00 or more per month.35 Petitioner’s goods and services are free. We recognize that users of Petitioner’s Ask.com search engine who are looking for Q&A software could be directed to Respondent’s ASKBOT products. However, this nexus between Petitioner’s ASK search engine and Respondent’s ASKBOT Q&A products is too tenuous to give rise to the mistaken belief that the goods and services of the parties emanate from the same source. See Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (“We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.”). We find that the trade channels for the parties’ goods and service are dissimilar.

*9 The du Pont factor relating to channels of trade weighs in favor of a finding that confusion is not likely.

C. Consumer Sophistication

Turning to the fourth du Pont factor, the conditions under which and buyers to whom sales are made, Respondent argues that its customers are “sophisticated users and could not confuse services provided by Askbot with those provided by the petitioner.”36 Respondent stated that “Customers of Askbot are Corporations, Nonprofit Organizations, Teachers and Hobbyists.”37 As discussed supra, Respondent’s website shows that its customers are providing information to others via Q&A forums. Petitioner’s customers are in the opposite position--they are seeking information on the internet.

Moreover, inasmuch as Respondent’s customers would need to be able to understand basic computer programming skills, we find it likely that they also would be able to distinguish the parties’ products. And given that Petitioner’s services are free and Respondent’s services require a monthly subscription, Respondent’s customers would be expected to exercise a higher degree of care in the purchasing decision.

This du Pont factor weighs in favor of a finding that confusion is not likely.

D. Strength of Petitioner’s Mark

We next consider the strength of Petitioner’s mark in order to evaluate the scope of protection to which it is entitled.

In determining strength of a mark, we consider both inherent strength, based on the nature of the mark itself, and fame or commercial strength. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. June 2018) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”).

1. The inherent strength of Petitioner’s ASK mark.

Respondent argues that the term “‘ask’ is one of the most commonly used English verbs”38 and submitted thirty-five third-party registrations for marks comprised solely or in part of the term ASK.39

*10 When assessing the inherent strength of a mark, third-party registrations for similar goods or services may be relevant to show the sense in which a mark is used in ordinary parlance; that is, an element common to both parties’ marks may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that the common element is relatively weak. Jack Wolfskin 116 USPQ2d at 1136.

All of the third-party marks comprised solely of the term ASK are of little probative value because they are registered for goods or services completely unrelated to those of the parties.40 In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other types of goods where the proffering party had neither proven nor explained that they were related to the goods in the cited registration); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third- party registrations are of limited probative value because the goods identified in the registrations appear to be in fields which are far removed from the goods at issue).

The following third-party marks comprised in part of the term ASK and registered for goods and services more closely related to the parties’ goods and services are the relevant to determining the inherent strength of Petitioner’s ASK mark:

Mark Reg. No. Goods or Services ASK A CPA 4284114 Downloadable software . . . for use in financial and accounting database management and, accounting questions and answers, in International Class 9.

ASK ENERWIZ 4543915 Providing an internet website featuring information in the field of environmental science; providing a website featuring a search engine for obtaining information on energy efficiency, renewable energy, environmental science, natural resources and for obtaining energy efficient products, in International Class 42. ASKJIM.BIZ & design 3355073 Providing the ability to search a database of business information and advice, namely, providing search engines for obtaining business information and advice on a global computer network, in International Class 42. ASKBIG-QUESTIONS. 3787908 Computer services, namely, creating an on-line community for ORG users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking, in International Class 42. ASK MARILYN 2640630 Providing information at the specific request of end-users by means of a global computer networks, in International Class 42. ASKME 2495731 Computer services, namely, services allowing users of computer networks and global computer networks to conduct searches for information and obtain information and consultations on a wide variety of subject matters, in International Class 42. ASK MR. ROBOT 4197446 Computer services, namely, creating an online community for computer users to participate in discussions, share information and scores, get feedback from peers, form virtual communities, and engage in social networking services in the field of computer games, in International Class 42. ASKONLINE 2891359 Providing temporary use of on-line non-downloadable software for use in providing a distance learning environment for education via chat rooms, bulletin boards and electronic mail, in International Class 42. ASK THE CAR PEOPLE 4385293 Computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions, in International Class 42. ASKVILLE 4428987 Computer services, namely, providing information at the specific request of end users by means of a global computer network, providing answers to natural language search engine queries made by customers via the internet on a variety of topics on a computer network, providing a website for users to supply information or perform services in response to requests from other users over a global computer network; providing specific information as requested by users via the Internet; providing on-line web pages featuring user-defined information, which includes search engines and on-line web links to other web sites; creating indices of information, sites and other resources available on computer networks, in International Class 42. ASK REDDIT 4160112 Computer services, namely, providing a website featuring technology that enables users to submit, rate, share, bookmark, index, store, collect, and showcase content in electronic form in the nature and fields of current events, politics, news, gaming, comedy, relationships, technology, photos, videos, religion, science, movies, and music; providing customized on-line web pages featuring userdefined information, including search engines and on-line web links to other websites, in International Class 42.

*11 All of the foregoing registrations include the term ASK used in connection with providing information to online users. These registrations establish that the term ASK has some inherent weakness when used in connection with the parties’ goods and services. That is, given that one must “ask” a question in order to get an answer, “ask” is suggestive of the function of online information products. We find, therefore, that Petitioner’s ASK mark is not inherently or conceptually strong when used in connection with Petitioner’s goods and services.

2. The commercial strength of Petitioner’s ASK mark.

Petitioner contends that “[i]t is undisputed that the ASK Marks are strong, and indeed, famous marks under a likelihood of confusion analysis, which should be entitled to broad protection.”41 Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use because they have extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).

“[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very weak.”’ Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (internal citations omitted)). Fame may be measured indirectly by the volume of sales of and advertising expenditures for the goods and services identified by the mark at issue, “the length of time those indicia of commercial awareness have been evident,” widespread critical assessments and through notice by independent sources of the products identified by the marks, as well as the general reputation of the products and services.Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at 1305-06 and 1309. Although raw numbers of product sales and advertising expenses sometimes suffice to prove fame, raw numbers alone may be misleading. Some context in which to place raw numbers may be necessary (e.g., the substantiality of the sales or advertising figures for comparable types of products or services).Id. at 1309.

Petitioner introduced evidence to establish that its ASK marks are famous. The following evidence is the most relevant:

• Testimony that the Ask.com website was launched in 1998 and has been in use since then.42

*12 • Testimony that Petitioner has spent “of millions and millions of dollars over the course of two decades” on advertising the “ASK brand,” including television commercials billboards, cinema advertising, and online advertising.43

• Confidential testimony regarding user traffic on the Ask.com website showing that between 2013 and 2016 the website received hundreds of millions of views each month.44

• A “comScore” ranking of top search engines, showing that, as of February 2016, the “ASK Network” is the fourth most popular search engine in the U.S.45

Petitioner’s evidence shows that it has been using ASK-formative marks since as early as 1995. Petitioner’s original search engine was launched under the name ASK JEEVES! but the “JEEVES!” portion was “retired” in 2006 and no longer appears on Petitioner’s website.46 Petitioner also has used ASK.COM, ASK KIDS, and other ASK marks to identify its various services. Based on long use of the marks, number of searches conducted, and advertising expenditures, Petitioner concludes that “Millions of people know [the ASK brand], and the awareness around the brand is extremely high.”47

Petitioner’s evidence regarding fame, however, has significant shortcomings. It does not distinguish between Petitioner’s uses of various ASK-formative marks. For example, Petitioner used ASK JEEVES! as a mark until 2006, but it is not clear whether consumers recognize the ASK portion of ASK JEEVES! as a separate mark. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008) (“[T]here is no evidence from which to infer from opposer’s advertising expenses and revenues the extent to which consumers recognize the ONE TRUE FIT mark standing alone and outside the context of the LEE trademark.”). Similarly, the testimony regarding advertising of the “ASK brand” does not break out amounts for the different marks, particularly the ASK JEEVES! mark which has a very different commercial impression from ASK alone.

Although Petitioner’s internet traffic and share of searches are impressive and indicative of commercial success, we can only speculate about the actual impact of that success in creating brand awareness in the minds of consumers. That is, the evidence of internet traffic and share of searches fails to demonstrate that the successful marketing of ASK products translates into widespread recognition of the ASK mark among relevant consumers.

Regarding advertising expenditures, there is no testimony or evidence regarding whether the expenditures are large or small vis-à- vis other comparable internet search companies. And there are few recent examples of unsolicited media referring to the renown of Petitioner’s ASK-formative marks.

*13 Accordingly, we find that Petitioner has failed to show that ASK, by itself, is famous.

Although the record does not support a finding of fame, such that it plays a dominant role, we find that Petitioner’s ASK mark nevertheless has attained some commercial strength for the identified goods and services despite the inherent weakness of the term ASK, discussed above. On balance, because ASK is inherently weak, third-parties frequently use the term ASK in connection with other information websites, and Petitioner has not established the fame of ASK alone, the ASK mark cannot be regarded as particularly strong and entitled to broad protection.

E. Similarity of the Marks

We next consider the firstdu Pont factor, the similarity of the parties’ marks. In a likelihood of confusion analysis, we compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73 USPQ2d at 1691. “The proper test is not a side-byside comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721.

Petitioner’s mark is ASK and Respondent’s mark is ASKBOT. Both marks are presented in standard character form, which encompasses use of the respective marks in any typeface or stylization. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). Respondent has appropriated the entirety of Petitioner’s mark and merely added the descriptive term BOT, which is defined as “a computer program that performs automatic repetitive tasks.”48 While there is no per se rule that the marks are similar where the junior user incorporates the entirety of the senior user’s mark, the fact that Respondent’s mark subsumes Petitioner’s mark increases their similarity. See China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (CHI PLUS is similar to CHI both for electric massagers); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus confusingly similar to TITAN for medical ultrasound diagnostic apparatus); Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007) (ABS-CBN is similar to CBN both for television broadcasting services).

*14 Additionally, although we have considered the marks in their entireties, the term ASK is entitled to greater weight in our assessment of likelihood of confusion because it forms the entirety of Petitioner’s mark and comes first in Respondent’s mark. Consumers in general are inclined to focus on the first word or portion in a trademark, in this case, ASK.Presto Prods., Inc. v. Nice-Pak Prods, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imps., 73 USPQ2d at 1692.

Further, the descriptive term BOT in Respondent’s mark has less source-identifying significance and is clearly subordinate to ASK. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided that the ultimate conclusion rests on consideration of the mark in their entireties.”). In the context of Respondent’s goods and services, the term BOT conveys the impression that the software or service will perform repetitive search functions. Consumers familiar with Petitioner’s ASK search engine services would likely think that Respondent’s ASKBOT Q&A software and services were related and merely performed automated repetitive search tasks.

Although we agree with Respondent that the word ASK is hardly a unique or arbitrary term when used with online Q&A services, we do not find that the term is without any trademark significance. As the cases above indicate, although a mark may not be strong, a junior party normally cannot appropriate another party’s mark, add descriptive matter to it, and avoid a finding that the marks are similar.

In sum, we find that the marks are more similar than dissimilar in appearance, sound and meaning, and have substantially similar overall commercial impressions. The addition of the descriptive term BOT simply is insufficient to distinguish the marks ASK and ASKBOT.

F. Balancing the factors

Although the marks are similar and the goods and services are related, the term ASK is relatively weak when used in connection with the parties’ goods and services. Moreover, the respective goods and services are offered in different channels of trade to different consumers, and consumers are likely to exercise a greater degree of care when purchasing Respondent’s products. When we balance the relevant du Pont factors, we find that confusion is unlikely to occur among consumers in the marketplace.

Decision: The petition to cancel is dismissed.

Footnotes 1 Issued April 23, 2013. 2 Petitioner pleaded ownership of four additional registrations for ASK-formative marks but they were cancelled under Section 8 during these proceedings. We consider only the goods and services identified in Respondent’s remaining registrations.See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). 3 Issued October 28, 2008; Section 8 affidavit accepted and Section 15 affidavit acknowledged. 4 Issued December 12, 2000; renewed. 5 Issued July 7, 2009; Section 8 affidavit accepted and Section 15 affidavit acknowledged. 6 Issued March 17, 2009; Section 8 affidavit accepted and Section 15 affidavit acknowledged. 7 Issued June 26, 2001; renewed. 8 37 TTABVUE. 9 31 TTABVUE. 10 35 TTABVUE. 11 Petitioners’ Br., p. 24, 40 TTABVUE 32. 12 Respondent’s Br., p. 7, 43 TTABVUE 8. 13 A copy of the ASKVILLE registration was included separately in Respondent’s submission of third party registrations containing the term ASK. 35 TTABVUE 224-26. We have considered it along with the other third party registrations. 14 Petitioner’s Reply Br., p. 13, 44 TTABVUE 17. 15 Respondent’s Br., p. 4, 43 TTABVUE 5. 16 37 TTABVUE 2. 17 Respondent’s Br., p. 9, 43 TTABVUE 10. 18 Declaration of Kevin M. Wallace, ¶ 3, Exh. A, 44 TTABVUE 20, 22-25. 19 January 7, 2017 was a Saturday so the deposition was timely held on Monday, January 9, 2017. 37 C.F.R. § 2.196. 20 Declaration of Kevin M. Wallace, Exh. B, 44 TTABVUE 27. 21 Id. at ¶ 5, Exh. A, 44 TTABVUE 21, 22-25. 22 Id. at ¶ 7, 44 TTABVUE 21. 23 Id., Exh. D, 44 TTABVUE 37. 24 9 TTABVUE. The Board denied Petitioner’s motion for summary judgment on likelihood of confusion. 25 Petitioner’s Exh. A, 31 TTABVUE 8. 26 Respondent’s Br., p. 3, 43 TTABVUE 4.

27 Combs Test., p. 18, Exh. 11, 37 TTABVUE 19, 79. 28 Https://www.merriam-webster.com/dictionary/search/engine. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. 29 ASKBOT website, Petitioner’s Exhs. A and B, 31 TTABVUE 7-11. 30 Respondent’s Br., p. 20, 43 TTABVUE 21. 31 Respondent’s answer to Interrogatory No. 3, 31 TTABVUE 45. 32 Combs Test., p. 11, Exh. 5, 37 TTABVUE 12, 61-62. 33 Petitioner’s Br., p. 7, 40 TTABVUE 15. 34 Respondent’s answer to Interrogatory No. 3, 31 TTABVUE 45. 35 Respondent’s web page, Petitioner’s Exh. C, 31 TTABVUE 13. 36 Respondent’s Br., p. 17, 43 TTABVUE 18. 37 Respondent’s answer to interrogatory No. 29, 31 TTABVUE 51. 38 Respondent’s Br., p. 4, 43 TTABVUE 5. 39 Respondent’s Exhs. E and F, 35 TTABVUE 190-279. 40 Respondent’s Exh. E, 35 TTABVUE 190-223. 41 Petitioner’s Br., p. 16, 40 TTABVUE 24. 42 Combs Test., p. 7, 37 TTABVUE 8. 43 Id. at 12, 37 TTABVUE 13. 44 39 TTABVUE. 45 Combs Test., p. 17, Exh. 9, 37 TTABVUE 18, 69-74. 46 Combs Test., p. 8, Exh. 2, 37 TTABVUE 9, 36-45. 47 Combs Test., p. 12, 37 TTABVUE 13. 48 Https://www.merriam-webster.com/dictionary/bot.

2018 WL 4237617 (Trademark Tr. & App. Bd.)

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