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 disparaging marks.
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 versa).”
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, well, scandalous.”
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 unreadable thumbnails.”
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 conclusion.
“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 meaning.
The Supreme Court in the case will consider two questions:
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 meaning.
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 mechanism.
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 Licensing.
Microsoft has entered into more than 1,200 licensing agreements since it launched its IP licensing programme in December 2003.
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