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TTAB, Eastern District of Texas, Apple, Samsung, Batmobile, Marilyn Monroe – the week in IP



Michael Loney


The TTAB’s 2015 precedential opinions, the Federal Circuit taking on a case challenging the Eastern District of Texas’s patent case dominance, Apple's grant of an injunction, the Supreme Court being asked to hear a Batmobile copyright case, and a trade mark fight involving Marilyn Monroe were in the IP headlines this week

Also on the blog this week:

Guest post: Innovation and the case for confidence


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 and 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 patent cases, reports Corporate Counsel. Forty-four percent of the patent cases filed in US district courts last year were filed in the district.

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 infringement.

Dennis Crouch 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 September held that Mark Towle was infringing copyright by making replicas of the Batmobile.

Towle is asking the Supreme Court to consider three questions:

-       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 copying.



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 proceedings

INTA elects JTI’s Ronald van Tuijl as 2016 president

The issues to watch in Cuozzo at the US Supreme Court

Nestlé loses fight over acquired distinctiveness of Kit Kat bar

EPO staff demonstrate in Munich

Start-ups in India to get special IP treatment

How to prove it to the PTAB

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