Other Barks & Bites for Friday, April 24: CJEU Issues Ruling on Trademark Law and 3D Shapes, Copyright Office Issues Proposed Rulemaking on MMA, INTA Files Brief in Jack Daniel’s Dog Toy Case

This week in Other Barks & Bites: the Supreme Court hands out a pair of IP decisions, holding that willfulness is not required for profits awards in all trademark cases and that institution decisions at the PTAB are not reviewable despite violations of the statutory one-year time bar; the CJEU clarifies EU trademark law regarding the registration of trademarks for products that are solely decorative; INTA asks the full Ninth Circuit to rehear VIP Products v. Jack Daniels Properties, Inc.; the Copyright Office issues rulemaking notices related to the agency’s implementation of mechanical licensing collective activities and other aspects of the Music Modernization Act; global stocks tumble after Gilead halts a clinical trial examining the use of remdesivir to treat coronavirus patients; the USITC decides in favor of Rovi in a Section 337 investigation of Comcast; and the USPTO reports a reduction in Alice rejections owing to the agency’s implementation of revised subject matter eligibility guidelines in 2019.

Bites

SCOTUS Finds Willfulness Not Required for Trademark Profits Award – On Thursday, April 23, the U.S. Supreme Court issued a decision in Romag Fasteners v. Fossil Group in which the nation’s highest court solved a circuit split by holding that a plaintiff alleging trademark infringement under 15 U.S.C. § 1125(a), which creates a cause of action for the false and misleading use of trademarks, and seeking a court award of infringer profits does not need to make a showing of willful infringement, which is required for such awards in trademark dilution actions.

USPTO Reports That 2019 PEG Reduced First Office Action Rejections Under Alice – On Thursday, April 23, the U.S. Patent and Trademark Office issued a report containing analysis of patent prosecutions since the January 2019 Revised Subject Matter Eligibility Guidance (2019 PEG) which shows a 25 percent reduction in first office actions with a rejection for patent applications covering technologies affected by the Supreme Court’s 2014 decision in Alice v. CLS Bank.

CAFC Finds No Injury in Fact Creating Standing for Argentum – On Thursday, April 23, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Argentum Pharmaceuticals v. Novartis Pharmaceuticals in which the appellate court dismissed an appeal from the Patent Trial and Appeal Board (PTAB) after Argentum, the lone appellant seeking to overturn the PTAB’s determination that Novartis’ patent claims were not invalid, had failed to demonstrate any concrete injury in fact required for Article III standing.

INTA Files Brief in Trademark Case Examining Protection for Expressive Works Under First Amendment – The International Trademark Association has filed an amicus brief with the U.S. Court of Appeals for the Ninth Circuit asking the full court to rehear VIP Products v. Jack Daniels Properties, Inc., which held that a dog toy copying the Jack Daniel’s bottle was an expressive work entitled to protection under the First Amendment. INTA’s brief seeks to “ensure the proper application of (i) Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), and (ii) the Trademark Dilution Revision Act (“TDRA”)’s noncommercial use exception, 15 U.S.C. § 1125(c)(3)(C).” The brief argues that, until the present case, courts have limited application of Rogers to cases involving the use of trademarks in expressive works, but the VIP Products decision “improperly extends Rogers to the use of trademarks on any commercial good arguably having some ‘expressive’ quality.”

CJEU Issues Ruling Explaining Trademark Law Surrounding 3D Shapes – On Thursday, April 23, the Court of Justice of the European Union (CJEU) issued a preliminary ruling to clarify EU trademark law related to the issue of whether a three-dimensional shape can be protected as a trademark when the sole function of the product covered by the 3D shape mark is decorative and the 3D shape already enjoys protection as a design. 

Copyright Office Issues Proposed Rulemaking Under Music Modernization Act – On Wednesday, April 22, the U.S. Copyright Office published several notices of proposed rulemaking in the Federal Register related to the agency’s authority under the Hatch-Goodlatte Music Modernization Act (MMA) to collect data from digital music providers for blanket licenses, to direct the mechanical licensing collective’s (MLC) distribution of blanket license royalties and the treatment of confidential information collected by the MLC. The Copyright Office also published a notification of inquiry seeking public comment on issues related to transparency of the MLC and its public musical work database.

CAFC Affirms Delaware Court on Assignor Estoppel Issues – On Wednesday, April 22, the Federal Circuit issued a precedential decision in Hologic v. Minerva Surgical in which the appellate court affirmed rulings by the District of Delaware finding that assignor estoppel did not bar a patent assignor from relying on the Federal Circuit’s affirmance of a PTAB invalidation but did bar the assignor from asserting invalidity of the assigned patent in district court.

CAFC Affirms Limits to Scope of Patent Term Extension – On Tuesday, April 21, the Federal Circuit issued a precedential decision in Biogen International v. Banner Life Sciences in which the appellate court affirmed a ruling by the District of Delaware that patent term extensions under 35 U.S.C. § 156 do not cover a monomethyl ester covered by a Biogen patent claim, finding that such extensions are only provided to the active ingredient of an approved product or a salt or ester of that active ingredient.

SCOTUS Finds PTAB Institution Decisions are Categorically Unreviewable – On Monday, April 20, the Supreme Court issued a decision in Thryv v. Click-to-Call Technologies in which the nation’s highest court found that 35 U.S.C. § 314(d), which says that the Patent Trial and Appeal Board’s (PTAB) determination to institute an inter partes review (IPR) proceeding shall be nonappealable, precludes judicial review of IPR institution decisions made in violation of 35 U.S.C. § 315(b), which requires that IPR petitions challenging a patent’s validity be filed by a party within one year of being sued for infringement of that patent. Remarking on the decision, the Innovation Alliance said that it was “disappointed” in the court’s ruling, which “extends the unchecked power of these administrative tribunals and threatens to further undermine the patent rights of inventors.”

Barks 

USITC Finds Section 337 Violation By Comcast X1 Set-Top Boxes – On Thursday, April 23, the U.S. International Trade Commission (ITC) announced a determination of a Section 337 violation committed by Comcast Corporation over its importation and sale of its X1 set-top boxes which infringe upon a patent claim asserted by Rovi Guides. 

NASCAR Driver Faces Trademark Suit Over Workout Supplement – On Wednesday, April 22, Australia-based sports supplement firm ATP Science Proprietary Ltd. filed a lawsuit in the Southern District of Florida alleging claims of trademark infringement against NASCAR driver Caesar Bacarella over his marketing of a pre-workout supplement sold under the “Alpha Prime” brand name.

Bankruptcy Filing Halts First Marijuana Patent Lawsuit – On Tuesday, April 21, U.S. District Judge William Martinez of the District of Colorado ordered a stay to a patent infringement case filed by United Cannabis, reported to be the country’s first patent lawsuit filed on a marijuana patent in district court, after that firm filed for Chapter 11 bankruptcy.

Sealaska Heritage Alleges Copyright Infringement Claims Against Neiman Marcus – On Tuesday, April 21, Juneau, AK-based cultural organization Sealaska Heritage Institute filed a lawsuit in the District of Alaska including copyright infringement claims against retailer Neiman Marcus over its sale of “Ravenstail” coats which allegedly infringe on designs created by indigenous Northwest cultures.

USPTO Issues Request for Comment on PTAB Reexam Appeals – On Monday, April 20, the USPTO published a request for comments in the Federal Register seeking to collect information from the public related to appeals of adverse decisions by the PTAB in ex parte reexamination and inter partes reexamination proceedings.

Photographer Sues Sinclair Television Over “Pink Supermoon” Picture – On Monday, April 20, photographer Anthony Ayiomamitis filed a lawsuit in the Western District of Texas alleging copyright infringement claims against Sinclair Television over that firm’s unauthorized use of a copyrighted photo by Ayiomamitis depicting a lunar apogee and perigee which was published with an article published in early April about the then-upcoming “pink supermoon.” 

Wine Group Can’t Avoid “Buttery” Trademark Claim in Summary Judgment – On Friday, April 17, U.S. District Judge Haywood Gilliam of the Northern District of California denied a motion for summary judgment filed by The Wine Group after finding that the strength of JaM Cellars’ “BUTTER” trademark for wine and The Wine Group’s similar use of the mark in marketing its Franzia “Rich & Buttery” brand resulted in a genuine issue of material fact regarding the potential for consumer confusion.

New Balance Wins $1.5M Award in Unfair Competition Case in China – On Thursday, April 16, the Shanghai Pudong People’s Court issued a decision awarding 10.8 million RMB ($1.5 million USD) to athletic apparel firm New Balance after finding defendant New Barlun’s use of a stylized “N” logo creates consumer confusion with New Balance’s logo.

This Week on Wall Street 

Wall Street Buckles After Reports of Halted Coronavirus Treatment Trial – On Friday, April 24, global stock exchanges fell by as much as 1.5 percent after reports surfaced that Gilead Sciences had terminated a clinical trial of remdesivir after early findings in the study showed no association with clinical improvement of patients being treated for COVID-19, although Gilead has publicly stated that such information was prematurely released and that the trial was ended for low enrollment.

Intel Posts Revenue Beat But Expects Weaker Demand in 2020 – On Thursday, April 23, Intel Corp. issued its earnings report for 2020’s first quarter in which it posted quarterly earnings of $19.83 billion, topping analyst expectations of $18.7 billion, although Intel’s second quarter guidance came in below analyst forecasts and the company indicated that it expected weaker demand from enterprise and government customers through 2020.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2018 are announcing quarterly earnings next week (2018 rank in parentheses):

• Monday: Aisin Seiki Co. (t-227th); Bayer AG (50th); Hitachi High-Tech Corp. (216th); Kyocera Corp. (84th); Nitto Denko Corp. (t-202nd); NXP Semiconductor N.V. (t-126th); Renesas Electronics Corp. (71st); United Microelectronics Corp. (104th)
• Tuesday: 3M Co. (56th); ABB AG (132nd); Advanced Micro Devices, Inc. (t-214th); Alphabet Inc. (6th); Caterpillar Inc. (75th); Corning Inc. (77th); Ford Motor Co. (14th); Fujitsu Ltd. (t-34th); LG Chemical, Ltd. (61st); LG Innotek Co., Ltd. (87th); Mastercard Inc. (t-238th); Mediatek Inc. (85th); Merck & Co., Inc. (t-178th); Novartis AG (151st); NTT Docomo, Inc. (t-197th); Rockwell Automation Inc. (t-217th); Samsung Electro-Mechanics Co., Ltd. (108th); Shimano Inc. (t-209th)
• Wednesday: Airbus SE (t-241st); Boeing Co. (28th); Boston Scientific Corp. (t-126th); Dolby Laboratories, Inc. (119th); eBay Inc. (142nd); Facebook, Inc. (65th); General Electric Co. (4th); LG Electronics Inc. (7th); Microsoft Corp. (9th); Qualcomm, Inc. (10th); Samsung Electronics Co., Ltd. (2nd); Samsung SDI Co., Ltd. (106th); Volkswagen AG (t-247th)
• Thursday:com, Inc. (16th); Apple, Inc. (11th); Comcast Corp. (223rd); Delta Electronics Inc. (t-233rd); Jtekt Corp. (t-184th); Nielsen Holdings PLC (t-202nd); Nokia Corp. (41st); Seiko Epson Corp. (24th); Stanley Black & Decker, Inc. (t-262nd); Visa Inc. (t-184th); Western Digital Corp. (116th); Whirlpool Corp. (118th)
• Friday: Colgate-Palmolive Co. (t-262nd); ExxonMobil Corp. (100th); Honeywell International Inc. (36th)