Also on the blog this week:
DOJ says Tam also covers "immoral" marks
In a letter brief to the Federal Circuit, the US Department
of Justice has said
the Federal Circuit’s In re Tam (The Slants
case) decision was so broad that it goes beyond covering only
Squire Patton Boggs noted that
the Slants decision not only paved the way to registration for
owners of potentially disparaging marks but also left the door
open for a similar challenge in the related categories of
"immoral" or "scandalous" marks.
"That door was flung wide open in an appeal to the Federal
Circuit over the [USPTO’s] refusal to register the
mark 'FUCT’ on the grounds it was scandalous,"
said the law firm.
The USPTO denied artist Erik Brunetti a trade mark covering
the term "fuct" on the grounds that it was immoral in 2014.
In this appeal, the DOJ submitted a letter brief agreeing
the case should be vacated and remanded for further proceeding.
"[T]he reasoning of Tam requires the invalidation of Section
2(a)’s prohibition against registering scandalous
and immoral marks as well…. we do not believe that
Section 2(a)’s prohibition on registration of
scandalous and immoral marks can withstand challenge under the
current law of this Circuit," wrote the DOJ.
The DOJ added that it believes Tam was wrongly decided and
it is considering whether to seek review of that decision to
the Supreme Court. It said that if Supreme Court review is
sought "the government may argue that, under reasoning less
sweeping than that adopted in Tam, the bar on registration of
scandalous and immoral marks would survive even if the bar on
registration of disparaging marks were held invalid (or vice
Squire Patton Blogs concluded: "Although these decisions on
disparaging, scandalous, and immoral marks may not be
applicable to the vast majority of trademark owners, they do
demonstrate the power of the First Amendment, and its ability
to erode away what some thought were iron-clad provisions of
trademark jurisprudence. Who knew trademark law could be so,
New York Times says its thumbnails not fit to print
The New York Times has sued over the use of thumbnail images
of its front pages in a book,
reports Rebecca Tushnet’s 43(B)log. Tushnet
said the Times had "quite unwisely" sued over "this textbook
(coffee-table book?) fair use".
David Shields licensed photos from the Times for "War if
Beautiful: The New York Times Pictorial Guide to the Glamour of
Armed Conflict", which argues that the images the newspaper
uses glamorise war. The insides of the covers includes 64
thumbnail images of the front page covers whose images are
shown in the inside of the book.
In a complaint filed in a New York federal court, the New
York Times alleged copyright infringement. The suit says that
publisher Powerhouse Books and its CEO Daniel Powers paid to
licence the larger images inside the book but did not get a
license for the thumbnails.
Georgetown professor Tushnet described the suit this a
"hissy fit", and analysed the reasons it does not have merit.
"Let's review: Factor one, purpose of the use: images
contextualizing the main argument of the book, which involves
the overall aim of the Times, not just the photos in isolation
but their presentation by the paper," she wrote. "That's
classic historicization and commentary: transformative use
under Dorling Kindersley. Nature of the work: already
published, favouring fair use; news photos and news stories,
even if creative, are highly factual, though that doesn't
matter much in transformativeness cases. Amount taken: The
Times apparently claims a copyright in the layout of the front
page, but really the work would have to be that day's print
edition, meaning that the book reproduces a fraction of the
work, although qualitatively perhaps more important than an
average page. But the real kicker, of course, is size.
Much more than in Dorling Kindersley, where you could
at least read most of the text in the images, there's no way
anyone could read the chunks of news stories at issue
here. Size cuts decisively in favour of fair use.
Market effect: the Times isn't entitled to any market for
transformative uses, even if there were some market for
Tushnet concluded: "It's hard not to look at this lawsuit as
the reaction of a paper embarrassed at having licensed photos
for what turned out to be a work of harsh criticism." She added
that the case was a good candidate for awarding fees regardless
of what the outcome is in
the Supreme Court’s Kirtsaeng case.
Why Cuozzo may not succeed at the Supreme Court
Oblon’s Scott McKeown on the Patents Post-Grant
blog this week
ran a good analysis of the Cuozzo Speed v Lee case, which
was granted cert by the Supreme Court this month. This is the
first time the Supreme Court has taken on a case involving a
Patent Trial and Appeal Board decision.
McKeown said, despite the high
court’s reputation for slapping down the Federal
Circuit, success in this case is far from a foregone
"The grant of certiorari in many Federal Circuit cases has
led to reversal. As such, many are viewing the high court's
interest in Cuozzo as an indication that the use of BRI in PTAB
proceedings will be short-lived. Unlikely," wrote McKeown.
The crux of McKeown’s arguments is that it is
not accurate to characterize the broadest reasonable
interpretation as somehow eschewing plain and ordinary
The Supreme Court in the case will consider two
1. Whether the court of appeals
erred in holding that, in IPR proceedings, the Board may
construe claims in an issued patent according to their broadest
reasonable interpretation rather than their plain and ordinary
2. Whether the court of appeals
erred in holding that, even if the Board exceeds its statutory
authority in instituting an IPR proceeding, the
Board’s decision whether to institute an IPR
proceeding is judicially unreviewable.
Federal Circuit criticises PTAB decision
The Federal Circuit has vacated a final decision in an inter
partes review, with the court holding that the Patent Trial and
Appeal Board "did not adequately describe its reasoning for
finding the claims obvious",
reports the Patently-O blog.
The PTAB is required to "articulate
its reasoning for making its decision" to the Federal Circuit,
including explaining the factual bases for its findings going
well beyond "conclusory statements".
The patent at issue in the case is directed to a brush
assembly used to maintain an electric current with a rotating
In the non-precedential Cutsforth v MotivePower decision,
the Board recited the challenger MotivePower’s
arguments and conclusion for obviousness but did not formally
adopt its own conclusions.
"The Board’s decision appears to assume this
combination is obvious," said the Federal Circuit. "It offers
no explanation for why a person of ordinary skill in the art
would adjust Bissett and Kartman to create the claimed mounting
block of the ’018 patent. The Board only states
that MotivePower argued it was obvious to do so."
Dennis Crouch in a Patently-O blog post commented: "On
remand, I expect that the Board will simply rewrite its 33-page
decision – better explaining its holdings –
but we shall see."
In other Supreme Court IP news, the amicus briefs are
rolling in for the Halo and Stryker cases and the FOSS
Patent blog says the broad-based support for
Samsung’s petition in the Apple design patents
case means "
cert looms large".
Microsoft and Olio in patent licensing agreement
Microsoft Technology Licensing and Olio Devices have signed
a patent licensing agreement covering wearable devices.
"Mutually beneficial and collaborative patent licensing
agreements like this one promote innovation and lead to better
products and experiences for consumers,"
said Nick Psyhogeos, president of Microsoft Technology
Microsoft has entered into more than 1,200 licensing
agreements since it launched its IP licensing programme in
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