Also on the blog this week:
40 precedential TTAB opinions in 2015
The Trademark Trial and Appeal Board issued 40 precedential
opinions in 2015,
according to The TTABlog’s count.
This is down slightly in recent
years, with the previous three years having numbers of 45, 44
"While trademark developments in the courts may have
overshadowed the TTAB's efforts this past year, there were
still plenty of decisions worth noting," noted the
blog’s John Welch.
The blog post listed all the precedential opinions, which
included cases involving PRINCESS KATE, PORNO JESUS and THE
HOUSE THAT JUICE BUILT.
All my ex-cases are in Texas?
The Federal Circuit has agreed to hear a case that
challenges the dominance of the Eastern District of Texas in
reports Corporate Counsel. Forty-four percent of the patent
cases filed in US district courts last year were filed in the
Oral arguments in In Re: TC
Heartland will be heard on March 11. The case seeks to scrap
the rule established in the 1990 Federal Circuit case VE
Holding, which expanded the places patent owners could sue for
on the Patently-O blog commented: "If the petitioner here
wins, we could see a dramatic shift in the geographic
distribution of patent cases. In other words, it would become
much more difficult to bring an infringement action in the
ongoing hot-spot of the Eastern District of Texas."
Apple granted useless injunction
Judge Lucy Koh of the Northern District of California has
granted an injunction banning Samsung from selling certain
smartphones on the US,
reports Ars Technica. However, the
injunction order applies to models that are so old as to
barely have an effect on the smartphone market.
The news is the latest development
in the long-running patent lawsuits involving Apple and
Samsung. Several phones were found to infringe the so-called
"quick links" patent, which expires on February 1. Three phones
were found to have infringed the "slide to unlock" patent.
According to Ars Technica, Samsung will likely try to design
around Apple’s autocorrect patent.
Ars Technica’s Joe Mullin wrote: "Mainly, the
injunction at this point just provides bragging rights for
Apple. The case proves that one can use patents to force a
competitor to remove features."
Meanwhile, the FOSS Patents blog
reports that there is broad-based support for
Samsung’s Supreme Court’s petition in
Apple’s design patents case.
Dark Knight rises to the Supreme Court
A man who made Batmobiles has filed a writ of certiorari
asking the Supreme Court to consider whether
Batman’s car can be considered a "character"
covered by copyright,
according to The Hollywood Reporter.
The Ninth Circuit of Appeals last
held that Mark Towle was infringing copyright by making
replicas of the Batmobile.
Towle is asking the Supreme Court to consider three
- Whether a court may
judicially create a subject of copyright that was specifically
and expressly excluded by Congress as such when Congress
enacted The Copyright Act, thus circumventing the clear mandate
of Congress and the US Copyright Office;
- Whether an automobile
that does not display any personality traits or any consistent
and widely-identifiable physical attributes can be separately
protected by copyright as a "character"; and
- Whether a
determination of substantial similarity of protected expression
must be made in a copyright case, independent of proof of
A fight over Marilyn Monroe’s image
Foley Hoag’s Trademark & Copyright Law Blog
this week analysed a case pending in the Federal District
Court for the Southern District of New York that will explore
the boundaries between Marilyn Monroe’s trade mark
rights and her right of publicity.
The Ninth Circuit of Appeals in 2012 held that
Monroe’s right of publicity – the right
of a person to control the commercial use of their image, name,
likeness, or other defining aspect of their persona –
died when she did. Monroe was domiciled in New York when she
passed away in 1962.
The false endorsement issue is central to AVELA v The Estate
of Marilyn Monroe. Section 43(a) of the Lanham Act entitles
celebrities to sue for trademark infringement when others use
their persona to suggest a false endorsement or affiliation
with goods or services.
Monroe’s estate had sent AVELA cease-and-desist
letters for selling goods bearing Monroe’s
likeness. As the estate’s purported publicity
rights had been nullified, AVELA sought a declaratory judgment
of non-infringement, to which the estate filed various
counterclaims in response.
AVELA sought to dismiss the counterclaims, arguing they were
simply an attempt to resuscitate Monroe’s right of
publicity. The court recently rejected this argument, holding
that the causes of action were different because the trade mark
claim required proof of likelihood of confusion.
"So the case continues, at least for now," said Foley Hoag.
"It will be interesting to see whether Monroe’s
estate can prove that the public is likely to believe that a
woman dead for more than half a century is currently endorsing
products. For the record, AVELA raised this issue in its motion
to dismiss, but the court was not persuaded, leaving the issue
of the viability of Monroe’s post-mortem
endorsement claims for a later stage in the litigation."
In our news and analysis:
Report reveals top reasons for resolution of PTAB
INTA elects JTI’s Ronald van Tuijl as 2016
The issues to watch in Cuozzo at the US Supreme Court
Nestlé loses fight over acquired distinctiveness of Kit
EPO staff demonstrate in Munich
Start-ups in India to get special IP treatment
How to prove it to the PTAB