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Slurs, Insults and Cheers: the Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business Presented by Alan Nemes WERE YOU JUST INSULTING ME OR JUST REGISTERING A TRADEMARK? Matal v.Tam 58 U.S. ____, 137 S. Ct. 1744 (2017) © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 1 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Disparagement Clause Lanham Act §2(a) No trademark…will be refused registration…unless it: (a) consists of or comprises immoral, deceptive, or scandalous material; or matter which may disparage…..persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute. © 2017 Husch Blackwell LLP Disparagement Clause Unconstitutional . Supreme Court rules: . Disparagement Clause regulates content or viewpoint based speech in violation of 1st Amendment free speech . Limiting expressive speech requires strictest scrutiny . Even if commercial speech, government fails to meet its burden in demonstrating substantial interest in curtailing speech and narrowly drawing limits . Rejects claims that that trademarks are government speech or government subsidies. © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 2 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Immorality and Scandal: Next to the Chopping Block? . Lanham Act §2(a): . No trademark…will be refused registration…unless it: . (a) consists of or comprises immoral, deceptive, or scandalous material; or matter which may disparage…..persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute. © 2017 Husch Blackwell LLP In Re Brunetti No. 15-1109 (Fed. Cir. 2014) © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 3 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Copyright Protection for Cheerleading Uniforms? Star Athletica, LLC v. Varsity Brands, Inc. 580 U.S. __, 137 S. Ct. 1002 (2017) Star Athletica Varsity Brands Design Design © 2017 Husch Blackwell LLP Star Athletica, LLC v. Varsity Brands, Inc. Star Athletica Varsity Brands Design Design © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 4 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Star Athletica, LLC v. Varsity Brands, Inc. Star Athletica Design Varsity Brands Design © 2017 Husch Blackwell LLP Star Athletica, L.L.C. v. Varsity Brands, Inc. 580 U.S. ____ (2017). Holding: Design elements incorporated into useful articles are eligible for copyright protection if such elements can be conceived as a two- or three- dimensional work of art separately from the useful article, and would be eligible for copyright protection on its own after separation from the useful Article. Case is now remanded back to the District Court to determine whether the designs at issue in the case are actually protected by copyright. © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 5 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Work of Art or Wholly Useful Article? Brandir Intern., Inc. v. Cascade Pacific Lumber Co., 834 F. 2d 1142 (2nd Circ.1987) © 2017 Husch Blackwell LLP Parody or Piracy? Louis Vuitton Malletier, S.A. v. My Other Bag, Inc. 674 Fed. Appx. 16 (2d Cir. 2016) © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 6 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 Google generic? David Elliott v. Google, Inc. 800 F.3d 1151 (9th Cir. 2017) © 2017 Husch Blackwell LLP Doctrine of Foreign Equivalents In re S Squared, Inc. 86813357 (TTAB 2017) Not Precedential UHAI translates to “LIFE” in Swahili Applicant © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 7 Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017 USPTO Rule Change 2017 . Specimen requirements for multiple goods claimed in one class. New rule change took effect July 8, 2017. 37 CFR § 2.161(h) 37 CFR § 7.37(h) © 2017 Husch Blackwell LLP Questions Alan Nemes 314.345.6461 [email protected] © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 8 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 Patent Venue: Where is Home? By: Steve Holtshouser and Daisy Manning Overview . Why is patent venue important? . What was resolved in TC Heartland? . What has been its Impact ? . What issues ? – Section 1400(b) first prong issues - residence – Section 1400 (b) second prong issues – REPOB and act . What can we expect in the future? © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 1 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 Why Does Venue Matter? © 2017 Husch Blackwell LLP Why Does Venue Matter? . Other considerations – IPR stay policies – Consolidation of cases with common patents – Technical and patent expertise variance – Discovery practices – Section 1404 transfers – Dispositive, expert report and dispositive motion rules – Local patent rules and jury instructions – Role of magistrates © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 2 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 Section 1400(b) (b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business. © 2017 Husch Blackwell LLP Section 1400(b) Jurisprudence . Legislative history – “domicile” and “reside” – Designed to be restrictive and cure abuses – Defendants sued wherever they could be “caught” . Fourco (1957) – U.S. Supreme Court – 1400(b) is exclusive source of patent venue – residence means state of incorporation . VE Holding (1990) – Federal Circuit – Drew definition of residence from 1988 amendments to Section 1391 = scope of personal jurisdiction © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 3 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 What was the impact of VE Holding? . Contributed to rise of EDTX . 2013: 6100 patent cases filed . 2016: 4500 patent cases filed . Section 1404 - only recourse to combat forum shopping – High standard until recently: In re Google © 2017 Husch Blackwell LLP Marshall Division, EDTX © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 4 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 Marshall Division, EDTX © 2017 Husch Blackwell LLP Marshall Division, EDTX © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 5 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 TC Heartland LLC v. Kraft Foods Group Brands LLC (2017) . Patent battle over “Water enhancers” . Kraft: MiO brand drink enhancer . TCH: Refreshe, Skinnygirl and Sunkist brands © 2017 Husch Blackwell LLP TC Heartland LLC v. Kraft Foods Group Brands LLC (May 22, 2017) . Kraft sued TCH and parent in Delaware for infringement of patents covering flavored drink mixes . TCH - Indiana LLC with HQ in Indiana (SDIN) – Complaint alleged TCH is a “corporation” – SCOTUS petition for certiorari stated TCH was a “corporation” – Error acknowledged in SCOTUS briefing . TCH’s parent is an Indiana corporation © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 6 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 TC Heartland LLC v. Kraft Foods Group Brands LLC (May 22, 2017) . Lower Court decisions – Relying on VE Holding (1990)– Section 1400(b) first prong satisfied because TCH subject to personal jurisdiction in Delaware (product sales) – TCH argued Fourco (1957) still good law – venue improper – Federal Circuit disagreed - VE Holding controls © 2017 Husch Blackwell LLP TC Heartland LLC v. Kraft Foods Group Brands LLC (May 22, 2017) . Fourco meant what it said and intervening Congressional tinkering with 1391 did not overrule it . For Section 1400(b), a domestic corporation resides only in the state in which it was incorporated – Do not look to Section 1391 to define 1400(b) . Under the facts this is a rare advisory opinion – TCH was not a corporation . Remanded for further proceedings – settled on remand © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 7 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 Was TCH a “change” in the law? . Who cares? (diminishing returns) – Pending defendants who had failed to make the arguments made by TCH o Rush to assert TCH – patentees claim waiver • Change in the law excuses waiver o Courts about evenly split • Fourco never overruled – any party could have raised it. TCH did. We did. • Unreasonable to expect parties to challenge Federal Circuit o Federal Circuit just asked for briefing on the issue • In re: Yahoo Holdings Inc., Fed. Cir., No. 18-103, 10/26/17 © 2017 Husch Blackwell LLP The Fallout: 90 Days Before and After © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 8 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 The Fallout of TCH: Before and After © 2017 Husch Blackwell LLP Unresolved Issues: Residence Prong . Declaratory Judgment actions . Corporations from multi-district states . Foreign corporations . Unincorporated associations (LLCs, LLPs, LLLPs) © 2017 Husch Blackwell LLP © 2017 Husch Blackwell LLP. All Rights Reserved. 9 Forum Decorum and Dues News: An Update on Patent Venue and Attorney's Fees 11/08/2017 Declaratory Judgment Actions .
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