The USPTO has filed a petition for writ of certiorari
for Supreme Court review of In re Tam. The USPTO wants the
high court to deem the disparagement provision of the
Lanham Act unconstitutional as a violation of the First
The petition also argues that the Federal
Circuit’s decision would cause a big shift in
settled practice at the USPTO: "The question presented is
important. The statutory provision at issue here has guided
the PTO’s decisions for 70 years. Absent this
Court’s review, the Federal
Circuit’s ruling will effectively resolve the
validity of Section 1052(a)’s disparagement
provision nationwide because any applicant for trademark
registration may obtain judicial review of an adverse
decision of the PTO in that court. The petition for a writ
of certiorari should be granted."
The USPTO will be hoping it has better luck than
petitioners in IP cases that were denied by the Supreme
Court following its April 15 conference.
The most-watched case to be
denied was the attempt to revive a challenge from authors
to Google’s digital library of book,
as reported by The New York Times. The latest
development in the case before this was the Second
Circuit ruling that Google Books' scanning and indexing
of books is a transformative use that renders a public
benefit, leading to a finding of fair use. This was one
of the milestone cases in our
North America Awards held in March his year.
Following the Supreme Court’s denial,
Authors Guild president Roxana Robinson
said in a statement: "Today authors suffered a
colossal loss. We filed the class action lawsuit against
Google in September 2005 because, as we stated then,
'Google’s taking was a plain and brazen
violation of copyright law.’ We believed
then and we believe now that authors should be
compensated when their work is copied for commercial
The Supreme Court also denied a number of patent cases
last week, as reported
by the Patently-O blog. These were Vermont v MPHJ;
Limelight v Akamai; Hemopet v Hill’s Pet
Nutrition; and Tas v Beachy. This followed the Supreme
Court denying cert in Retirement Capital v US Bancorp in
its April 1 conference.
The Supreme Court today hears arguments in the
keenly-watched Cuozzo v Lee case, which will debate the
Patent Trial and Appeal Board’s claim
A Prince among copyright thieves
The death of Prince last Thursday was a massive loss
to the music world. But, as
the Wall Street Journal reported, he was also known
as a fierce defender of copyright.
Just last year, a federal appeals court in
California ruled against Universal Music and Prince in
the long-running "Dancing Baby" case. The court ruled
in the case involving a 29-second home video of a baby
dancing to "Let’s Go Crazy" that copyright
must consider fair use before sending a takedown
In 2014, Prince filed a lawsuit against 22 website
accusing them of sharing bootlegs of his
concerts. The pop star demanded $1 million
each, adding up to a total of $22 million. However, the
suit was quickly dropped when the website owners took
down the offending videos.
Prince was also issued the first takedown notices
for videos on the Vine platform, which limits videos to
six seconds. This inspired the Electronic Frontier
Foundation to grant Prince the Raspberry Beret Lifetime
for "extraordinary abuses of the takedown process in
the name of silencing speech".
The EFF also highlighted Prince’s
demands for taking down fan videos of his cover of
Radiohead’s Creep at the Coachella Music
Prince was also active in battling against Pirate
Bay. In addition, in the 1990s he sued a Chicago bike
messenger who made a guitar in the shape of the symbol
adopted as his name for a period.
an interview with The Guardian in 2011, Prince
compared to piracy as "carjacking". "The industry
changed," he said. "We made money [online] before
piracy was real crazy. Nobody’s making
money now except phone companies, Apple and Google.
I’m supposed to go to the White House to
talk about copyright protection. It’s like
the gold rush out there. Or a carjacking.
There’s no boundaries."
Adidas sues Ecco
Footwear maker Adidas has
sued rival Ecco alleging infringement of its
three-stripe trade mark,
reports The Fashion Law.
The suit was filed in federal court in Portland,
Oregan, and claims the Danish footwear marker
"intentionally adopted and used counterfeit and/or
confusingly similar imitations of the Three-Stripe
Mark knowing that they would mislead and deceive
consumers into believing that the [sneakers] were
produced, authorized, or licensed by adidas, or that
they originated from adidas."
Amend not abolish 101
Manny Schecter, chief
patent counsel at IBM has some suggestions for what
to do about Alice,
as outlined on the IPWatchdog blog.
Responding to David Kappos’s recent
call for Seciton 101 to be abolished, Schecter
said: "We could just amend it to fix this problem,
I don’t think we necessarily have to
He continued: "We are at the point where I think
we need legislation. This is a golden goose
industry… don’t let the courts
mess it up."